Mediarology, Inc. v. Andy Born / Click Media LLC
Claim Number: FA1604001672443
Complainant is Mediarology, Inc. (“Complainant”), represented by Syed of Seed Intellectual Property Law Group PLLC, Washington, United States. Respondent is Andy Born / Click Media LLC (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <astrostyle.org>, registered with eNom, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2016; the Forum received payment on April 28, 2016.
On May 2, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <astrostyle.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2016 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@astrostyle.org. Also on May 3, 2016, 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 May 26, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the ASTROSTYLE mark in connection with providing horoscope information to consumers. Complainant has a trademark application with the United States Patent and Trademark Office (“USPTO”) (Serial Number: 86/797031, filed Oct. 23, 2015). Complainant established common law rights in the mark through long-term use, past domain name registrations, and advertising. Respondent’s <astrostyle.org> domain name is substantially identical and confusingly similar to the ASTROSTYLE mark as it incorporates the mark in its entirety and adds the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests in the <astrostyle.org> domain name. Respondent is not commonly known by the disputed domain name. Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <astrostyle.org> domain name. Rather, Respondent attempts to pass itself off as Complainant, and provides links to competing horoscope websites.
Respondent is using the <astrostyle.org> domain name in bad faith. Respondent’s competitive use serves as a disruption to Complainant’s legitimate business purposes. Respondent is attempting to pass itself off as Complainant by using an identical reproduction of Complainant’s <astrostyle.com> domain name.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <astrostyle.org> domain name.
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(f), 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 (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 uses the ASTROSTYLE mark in connection with providing horoscope information to consumers. Complainant has provided evidence of Trademark Application Serial No. 86/797031 in support of its rights. However, trademark applications have not been considered sufficient evidence of Policy ¶ 4(a)(i) rights in a mark. See LA LASER CENTER, P.C. and DR. DANIEL TAHERI, M.D. v. EMC2, FA 1491309 (Forum May 6, 2013) (finding that Complainant fails Policy ¶ 4(a)(i) as it merely provided evidence of a pending trademark application which was approved and published for opposition, along with a brochure which includes on the last page, “Copyright © 2002, Teheri Dermatology,” and sufficient evidence of secondary meaning was not provided.). Therefore, the Panel has looked to evidence Complainant has provided in support of rights in the ASTROSTYLE mark under the common law. See, e.g., Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant argues that because the ASTROSTYLE mark has been continuously used by Complainant since at least as early as 2002, it has demonstrated common law rights in the mark for purposes of Policy ¶ 4(a)(i). In support of this contention, Complainant provides copies of various publications, videos and advertising materials used to market, promote and sell its services; these materials, according to Complainant, were registered as early as 2003. Specifically, Complainant references a book published by its founders, the “AstroTwins.” Ophira Edut & Tali Edut, Astrostyle: Star-studded Advice for Love, Life, and Looking Good (2007) (released Sept. 30, 2003). Panels have held that long-time media presence, promotional material/advertising, and holding similar or identical domain names are evidence of secondary meaning in a mark. See Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in September 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Panels have also held that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that a complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Therefore, the Panel finds that Complainant has established common law rights in the ASTROSTYLE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <astrostyle.org> domain name is substantially identical to and confusingly similar to the ASTROSTYLE mark as it includes the mark in its entirety and merely adds the gTLD “.org.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See World Wrestling Entertainment, Inc. v. emad ibrahim / this domain is for sale, FA 1579757 (Forum Oct. 13, 2014) (“The Panel agrees that the [disputed domain] name is identical as the inclusion of a generic top-level domain (“gTLD”) such as “.org” is irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis.”). Therefore, the Panel finds that Respondent’s <astrostyle.org> domain name is identical to the ASTROSTYLE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <astrostyle.org> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent a license or other permission to use the ASTROSTYLE mark. The WHOIS information regarding the disputed domain name lists “Andy Born/ Click Media LLC” as registrant of record. Respondent has not submitted a response in this proceeding to refute any of Complainant’s allegations. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.)
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <astrostyle.org> domain name. Complainant contends that the domain name resolves to a “cloning website” of Complainant’s <astrostyle.com> website to exploit the goodwill of Complainant’s ASTROSTYLE mark. Complainant further argues that Respondent uses the domain name to divert Internet users to websites offering competing horoscope services. Panels have found passing off and other disruptive/competitive use by a respondent is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s <astrostyle.org> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent’s use of the <astrostyle.org> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the diversion of Internet users to third-party websites offering competing services. Panels have agreed where a respondent has attempted to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Complainant further argues that Respondent is using the <astrostyle.org> domain name as a clone of Complainant’s original website <astrostyle.com> to pass itself off as Complainant. Complainant argues that the <astrostyle.org> domain name is identical to Complainant’s website, and that Respondent is attempting to confuse consumers as to the source and affiliation of the website. Panels have found passing off as evidence of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts . . . that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers . . . . The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”) Therefore, the Panel finds that Respondent’s alleged passing off behavior constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant has established all three elements required under the ICANN Policy. The Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <astrostyle.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 27, 2016
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