IMDB.COM, INC. v. TV / Tommy Vee
Claim Number: FA1903001832300
Complainant is IMDB.COM, INC. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is TV / Tommy Vee (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starmeterone.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 1, 2019; the Forum received payment on March 1, 2019.
On March 5, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <starmeterone.com> domain name (the Domain Name) is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 26, 2019 by which time Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@starmeterone.com. Also on March 6, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the IMDb movie information service, using the STARMETER mark in connection with its ranking system, which measures the popularity of celebrities and identifies trends in the public perception and awareness of movie personalities. The system has been offered to industry professionals since at least as early as 2002. Complainant has rights in the STARMETER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,631,890, registered Oct. 8, 2002). Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, merely adding the generic term “one” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, it uses it to promote competing marketing services in the movie industry, and allows consumers to purchase fake views to inflate their popularity on Complainant’s site. Permitting users to manipulate their own popularity rankings using fake traffic violates U.S. federal and state laws intended to protect consumers.
Respondent registered and uses the Domain Name in bad faith. Respondent has engaged in a pattern of bad faith registration of confusingly similar domain names. Further, Respondent disrupts Complainant’s business by diverting Internet traffic away from Complainant’s web site. He is also using the Domain Name to attract for commercial gain Internet users to his web site by creating confusion as to the source, sponsorship, affiliation or endorsement of his web site. Additionally, Respondent’s use of the Domain Name violates federal law and is illegal. Moreover, Respondent clearly had actual knowledge of Complainant’s rights in the STARMETER mark given that Respondent specifically references Complainant and its services at its website, and its service is designed to directly target and disrupt Complainant’s business. Respondent has already been the subject of an adverse UDRP decision involving the STARMETER mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant’s STARMETER mark was registered to Internet Movie Database, Inc. with the USPTO (Reg. No. 2,631,890) on October 8, 2002. See, Complaint Exhibit D. Registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). That registration was assigned to Complainant on or about September 4, 2008. See, Trademark Assignment Abstract of Title, Complaint Exhibit D. Complainant is currently the holder of all rights associated with the registration.
Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety merely adding the generic term “one” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the STARMETER mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated with Complainant and Complainant has not authorized or licensed Respondent to use its STARMETER mark, (ii) Respondent is not commonly known by the Domain Name, and it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to a competing web site which sells simulated IMDb views and votes, and allows its customers artificially to inflate their popularity statistics. These allegations are supported by competent evidence.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to the Forum by the registrar, a copy of which is submitted as Complaint Exhibit A-1, lists the registrant of the Domain Name as “TV” and the registrant contact as “Tommy Vee.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complaint Exhibit E is a screenshot of the web site resolving from the Domain Name. It features the name “StarMeter One” at the top of the first page and a tab labelled “IMDb Views.” The pages under that tab offer visitors the opportunity to buy IMDb views and votes for differing amounts of money, depending upon the level of service desired. It thus allows its customers artificially to inflate their popularity statistics to “guarantee your own viral success today” since “people rely heavily a preexisting fan base before liking, following or viewing anything on the web.” It also offers fake followers, views and “likes” for alternative entertainment web sites such as Facebook, Instagram, Twitter and YouTube. This conduct is fraudulent, and Complainant alleges that it is also in violation of federal and state laws intended to protect consumers. Using a domain name for illegal activity does not qualify as a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Nintendo of America Inc. v. rui ai, FA 1766615 (Forum Feb. 17, 2018) (“Use of a domain name containing the mark of another for an illegal purpose indicates a lack of rights under Policy ¶¶ 4(c)(i) and (iii).”).
The site also purports to offer marketing services for movies, actors, directors and production companies in the entertainment industry. This competes with the services offered by Complainant. Using a confusingly similar domain name to compete with a complainant does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv). Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Second, as a competitor of Complainant, Respondent is using the Domain Name to promote services that deceive Complainant and its customers by artificially inflating rankings and threatens to undermine the trust that customers and movie professionals place in Complainant. This disrupts Complainant’s business and fits within the circumstances described in Policy ¶ 4(b)(iii). Twitter, Inc. v. Privacy Protect, LLC, FA1710001753603 (Forum Nov. 13, 2017) (“using the [disputed] domain name to promote services that deceive Complainant’s users by artificially inflating popularity and viewership statistics …is evidence of disruption to Complainant’s business under Policy ¶ 4(b)(iii)”), Amazon Technologies, Inc. v. Moore, FA1603001666264 (Forum Apr. 25, 2016) (finding bad faith where “the resolving webpage offers fraudulent reviews for products listed on Complainant’s webpage and … Complainant’s business under the AMAZON trademark is in part predicated upon customers being able to give and receive product feedback”).
Third, information about persons in the movie industry is Complainant’s stock in trade, and it is important for Complainant and its customers to have confidence that it is accurate. Respondent uses the Domain Name to rent or sell others the ability to provide false information to Complainant, fraudulently inflating their own ratings and stature in the industry. Respondent is thus promoting and profiting from fraud and deception. Its conduct in this regard is patently unlawful, if not criminal. Again, in light of the nonexclusive nature of Policy ¶ 4(b), using a domain name for an illegal purpose has been held to constitute bad faith registration and use. Google Inc. v. Domain Admin / Whois Privacy Corp., FA150400161605239 (Forum Mar. 22, 2015) (Respondent’s use of the at-issue domain name to aid illegal activities under Complainant’s trademark and thereby tarnish the GOOGLE mark also suggests Respondent’s bad faith.).
Finally, it is evident from the close similarity between Complainant’s mark and Respondent’s Domain Name, from the fact that Respondent uses the Domain Name for his business in the same movie-related services industry as Complainant, even including on its web site a tab for users to submit information to Complainant, that Respondent had actual knowledge of Complainant’s mark in December 2018, when it registered the Domain Name. See, Complaint Exhibit A for registration date. In light of the nonexclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starmeterone.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
April 1, 2019
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