The One Group LLC v. A.B. Solutions
Claim Number: FA1204001439348
Complainant is The One Group LLC (“Complainant”), represented by Jonathan M. Doloff of Gilman Pergament LLP, New Jersey, USA. Respondent is A.B. Solutions (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stkbooty.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stkbooty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2012 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@stkbooty.com. Also on April 16, 2012, 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 May 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 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 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
B. Respondent
Respondent failed to 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 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.
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.”).
Complainant asserts that it has established its rights in the STK mark by registering it with trademark authorities around the world, including the USPTO (e.g., Reg. No. 3,188,230 registered December 19, 2006), CIPO (Reg. No. 722,923 registered September 4, 2008), and OHIM (Reg. No. 4,599,197 registered September 1, 2006). Complainant has provided multiple trademark certificates issued by numerous trademark authorities to verify its assertion. Based upon the evidence provided, the Panel concludes that Complainant has established its rights in the STK mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant also asserts that Respondent’s <stkbooty.com> domain name is confusingly similar to its STK mark. Complainant states that the disputed domain name includes the entire mark while also adding the generic top-level domain (“gTLD”) “.com” and the generic term “booty.” The Panel finds that since Complainant has shown that its advertising and marketing materials employ sex to promote its goods and services, the addition to the mark of the word “booty” fails to sufficiently differentiate the disputed domain name from Complainant’s STK mark in such a fashion as to remove the disputed domain name from the realm of confusingly similarity under Policy ¶ 4(a)(i). See AOL LLC v NA aka Kateryna Chernychenko,, FA 1177320 (Nat. Arb. Forum May 26, 2008) (holding that likelihood of confusion exists when respondent’s <icqporn.net> domain name contained complainant’s mark with the generic word “porn” added at the end).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “A.B. Solutions.” Based upon the evidence available, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that, as recent as March 30, 2012, the disputed domain name resolved to a website offering adult-oriented materials and links to adult-oriented websites. Complainant claims, and the Panel accepts, that Respondent has likely collected revenue via click-through fees when Internet users utilize the links offered. Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Complainant also argues, and this Panel accepts, that Respondent’s disputed domain name currently resolves to a website that is attempting to download potentially malicious software or malware to Internet users’ computers. Such use of a domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain names, which attempted to download malicious computer software onto Internet users’ computers, was not 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)).)
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims, and the Panel accepts, that Respondent has registered and was using the disputed domain name for a website offering adult-oriented material and links to adult-oriented websites. The Panel finds that Respondent has registered used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) based upon Respondent’s apparent commercial intent and use of the disputed domain name. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Respondent’s disputed domain name did, indeed, resolve to an adult-oriented website, as is evidenced by multiple printouts from the website to which the disputed domain name resolves, which were submitted by Complainant. Such use of the disputed domain name to exhibit adult-oriented material is further indicative of bad faith registration and use. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant further states, and the Panel accepts, that the disputed domain name resolves to a website offering a malicious software or malware download to Internet users diverted thereto. Using a disputed domain name to get Internet users to download malicious software further demonstrates bad faith use. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith use).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stkbooty.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 24, 2012
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