Tropical MBC, LLC v. Venkateshwara Distributor Private Limited
Claim Number: FA1005001326951
Complainant is Tropical
MBC, LLC (“Complainant”), represented by John J. O’Malley, of Volpe and Koenig PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwclips4sale.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2010.
On May 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwclips4sale.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2010 by which 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@wwwclips4sale.com. Also on June 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July , 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwclips4sale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <wwwclips4sale.com> domain name.
3. Respondent registered and used the <wwwclips4sale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tropical MBC, LLC, is the owner and operator of a website located at the <www.clips4sale.com> domain name, which features adult-oriented entertainment media. Complainant owns two federal trademark registrations for the CLIPS4SALE.COM and related marks with the United States Patent and Trademark Office (“USPTO”):
CLIPS4SALE.COM Reg. No. 3,508,680 filed January 27, 2006
issued September 30, 2008; and
CLIPS4SALE Reg. No. 3,554,200 filed January 30, 2006,
issued December 30, 2008.
Respondent, Venkateshwara Distributor Private Limited, registered the <wwwclips4sale.com> domain name on July 5, 2006. The disputed domain name resolves to a website offering similar adult-oriented entertainment media in competition with Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
Complainant owns two federal trademark registrations for the CLIPS4SALE.COM and related marks with the USPTO:
CLIPS4SALE.COM Reg. No. 3,508,680 filed January 27, 2006
issued September 30, 2008; and
CLIPS4SALE Reg. No. 3,554,200 filed January 30, 2006,
issued December 30, 2008.
The Panel finds that Complainant’s evidence of its trademark
registrations with the USPTO sufficiently establishes Complainant’s rights in
the CLIPS4SALE.COM mark for the purposes of Policy ¶ 4(a)(i),
even though Respondent lives and/or operates in a different country. See Bloomberg L.P. v. Johnston, FA
760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had
established rights in the BLOOMBERG mark through registration with the United
States Patent and Trademark Office); see
also KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that
it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether
the complainant’s mark is registered in a country other than that of the
respondent’s place of business). The
Panel also finds that Complainant’s rights in the CLIPS4SALE.COM mark date back
to the filing date of the trademark application, which predates the
registration of the disputed domain name.
See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date); see also J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration).
Complainant alleges that Respondent’s <wwwclips4sale.com> domain name is
confusingly similar to Complainant’s CLIPS4SALE.COM mark because the disputed
domain name consists only of Complainant’s mark and the prefix “www,” without
the period separating the prefix from Complainant’s mark. The Panel finds that the addition of the
common prefix “www” without the period separating it from the rest of the
domain name fails to distinguish the disputed domain name according to Policy ¶
4(a)(i). See Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s
domain name <wwwbankofamerica.com> is confusingly similar to the
complainant’s registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not possess rights and legitimate interests in the disputed domain name. Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must put forth a prima facie case in support of its contention against Respondent. The Panel finds that Complainant has established a sufficient case in this instance, and, therefore, the burden now transfers to Respondent to demonstrate rights and legitimate interests in the disputed domain name. Respondent’s default allows the Panel to assume that Complainant’s allegations are true and infer that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). The Panel will consider the evidence presented in light of the Policy ¶ 4(c) factors, however, in order to determine independently whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by
the <wwwclips4sale.com> domain
name. The WHOIS information does not
indicate that Respondent is commonly known by the disputed domain name, and
there is no evidence to support any connection between Respondent and the <wwwclips4sale.com> domain name prior
to Respondent’s registration and use of the disputed domain name. Complainant further asserts that it has no
relationship with Respondent and has not given Respondent license or consent to
use Complainant’s CLIPS4SALE.COM mark.
The Panel accordingly finds that Respondent is not commonly known by the
disputed domain name and subsequently lacks rights and legitimate interests
pursuant to Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 of that it is commonly known
by the disputed domain name); see
also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other
evidence in the record).
Complainant argues that that Respondent’s <wwwclips4sale.com> domain name
resolves to a website directly in competition with Complainant that offers
similar adult-oriented entertainment media.
The Panel finds that using a confusingly similar domain name to offer
competing products is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb.
Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that
the respondent’s use of a confusingly similar domain name to advertise real
estate services which competed with the complainant’s business did not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii)); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Complainant asserts that Respondent created the <wwwclips4sale.com> domain name by adding the prefix “www” to Complainant’s mark and eliminating the period that normally separates those two elements in a domain name. The Panel finds that as omitting the period following the “www” prefix is a common mistake made by Internet users when entering a web address, Respondent’s registration of such a domain name constitutes typosquatting. The Panel finds that typosquatting confers no rights and legitimate interests on Respondent according to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that the respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using the complainant’s mark to earn profit from pop-up advertisements).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s <wwwclips4sale.com> domain name is used to redirect Internet users to Respondent’s site that offers the same type of adult-oriented entertainment media offered by Complainant. Complainant argues that Respondent is therefore using the disputed domain name to disrupt Complainant’s business and direct Complainant’s intending customers to a competing website. The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain name to facilitate Respondent’s competition with Complainant demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent registered the <wwwclips4sale.com> domain name that
is confusingly similar to Complainant’s recognized mark in an effort to attract
Internet users seeking Complainant and then mislead them as to the sponsorship
of the resolving website. Because
Respondent operates in the same adult-oriented entertainment industry as
Complainant, there is a strong probability that Internet users arriving at
Respondent’s website via the disputed domain name will not realize their
mistake and will take advantage of Respondent’s offered products believing them
to be Complainant’s, thereby profiting Respondent. The Panel finds that such misuse of
Complainant’s mark to attract and mislead Complainant’s customers for Respondent’s
own commercial gain shows bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through registration of the confusingly similar <wwwclips4sale.com> domain name. The Panel finds that typosquatting, outside of all other factors, is strong evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwclips4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Justice, Supreme Court, NY (Ret.) , Panelist
Dated: July 8, 2010
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