Tony Hindhaugh v. Domain Administrator Number 8105 / c/o RespectMyPrivacy, LLC
Claim Number: FA1605001674993
Complainant is Tony Hindhaugh (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Domain Administrator Number 8105 / c/o RespectMyPrivacy, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tonyhindhaugh.com>, registered with PDR 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2016; the Forum received payment on May 13, 2016.
On May 17, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tonyhindhaugh.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@tonyhindhaugh.com. Also on May 17, 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 June 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a television presenter and wine expert. In 2006, the Discovery Channel hired Complainant to star in a reality television show regarding Complainant’s purchase and operation of a wine estate. Since 2012, Complainant has taught educational services related television presentation under the TONY HINDHAUGH name. Through extensive and varied use, Complainant’s TONY HINDHAUGH name has become synonymous with Complainant’s business, thereby establishing common law rights in the name. Respondent’s <tonyhindhaugh.com> domain name is confusingly similar to Complainant’s TONY HINDHAUGH mark. The disputed domain name incorporates the entire mark while removing spacing between the words, and adding the gTLD “.com.”
ii) Respondent lacks rights or a legitimate interest in the <tonyhindhaugh.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed to make use of the TONY HINDHAUGH mark. Respondent is using the <tonyhindhaugh.com> domain name as a gripe/complaint website to post comments against Complainant.
iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent is using the confusingly similar domain name to attract Internet users to its webpage where it criticizes Complainant.
B. Respondent
Respondent did not submit a response for the Panel’s consideration in this proceeding. The Panel notes that the <tonyhindhaugh.com> domain name was registered on November 13, 2013.
Complainant established that it has rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
The Panel agrees that even though Complainant does not claim a trademark registration for the TONY HINDHAUGH mark, such registration is not necessary so long as Complainant establishes secondary meaning in the mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant is a television presenter and wine expert. In 2006, the Discovery Channel hired Complainant to star in a reality television show regarding Complainant’s purchase and operation of a wine estate. Since 2012, Complainant has taught educational services related television presentation under the TONY HINDHAUGH name. Through extensive and varied use, Complainant’s TONY HINDHAUGH name has become synonymous with Complainant’s business. The standard rules pertaining to the protection of personal names require actual proof of secondary meaning for protection. Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business. See McCarthy on Trademarks and Unfair Competition, §§ 13:1–2 (4th ed. 2002). Complainant has submitted a number of exhibits to provide the Panel with evidence of the creation of secondary meaning around the TONY HINDHAUGH name. The Panel agrees with Complainant and holds that it has established secondary meaning around the TONY HINDHAUGH mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tonyhindhaugh.com> domain name is confusingly similar to the TONY HINDHAUGH mark. Complainant points to the fact that the disputed domain name incorporates the entire mark while removing spacing between the words, and adding the gTLD “.com.” The removal of spaces and addition of a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel agrees that the <tonyhindhaugh.com> domain name is confusingly similar to the TONY HINDHAUGH mark.
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 asserts Respondent is not commonly known by the <tonyhindhaugh.com> domain name under Policy ¶ 4(c)(ii). According to Complainant Respondent has not been authorized or licensed to make use of the TONY HINDHAUGH mark in any manner. The available WHOIS information for <tonyhindhaugh.com> lists “Domain Administrator Number 8105 / c/o RespectMyPrivacy, LLC” as the registrant of record. The use of a privacy service coupled with Respondent’s failure to refute any of Complainant’s contentions leads to a finding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent’s co-opting of Complainant’s entire TONY HINDHAUGH mark in the disputed domain name indicates that Respondent is intending to divert Complainant’s customers illegitimately. The Panel finds, as other panels have, that a respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use when a respondent uses a confusing similarity between a domain name and a mark to divert Internet users to their own website. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). The Panel notes that Respondent has a right to comment or criticize Complainants’ business practices. However, Respondent’s right to free speech does not cover registering a domain name which contains an entire mark in which Complainant has rights in order to capitalize on Internet user confusion. See Philip Morris USA Inc. v. David Delman and Lori Wagner, D2013-2182 (WIPO Mar. 25, 2014) (transferring seven “philipmorris” domain names to PM USA, and holding “Respondents cannot masquerade as Complainant in order to exercise their right to free speech.) The Panel holds that Respondent does not have rights or a legitimate interest in the <tonyhindhaugh.com> domain name under Policy ¶ 4(a)(ii).
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts the malicious and critical nature of Respondent’s resolving webpage is evidence of bad faith. Complainant’s belief finds support in precedent. Using a confusingly similar website to attract Internet users to a website presenting criticisms of the complainant has been found to support a finding of bad faith. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000) (finding bad faith where the respondent is intentionally using <walmartcanadasucks.com>, <wal-martcanadasucks.com>, <walmartuksucks.com>, <walmartpuertorico.com> and <walmartpuertoricosucks.com> domain names to attract Internet users to his website). The Panel finds that Complainant has demonstrated that Respondent has registered and is using the disputed domain name in bad faith under 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 <tonyhindhaugh.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 20, 2016
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