Skullcandy, Inc. v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA1605001675899
Complainant is Skullcandy, Inc. (“Complainant”), represented by Christopher M. Dolan of BARNES & THORNBURG LLP, Illinois, United States. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skullcandy.sale>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2016; the Forum received payment on May 24, 2016.
On May 23, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <skullcandy.sale> 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 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@skullcandy.sale. Also on May 24, 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 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant uses the SKULLCANDY mark in connection with its business of designing, manufacturing, marketing, advertising, and selling, among other things, headphones earphones, ear buds, and portable speakers. Complainant has registered the SKULLCANDY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,168,695, registered November 7, 2006), which establishes rights in the mark. See Compl., at attached Annex D. Respondent’s <skullcandy.sale> domain name is confusingly similar to the SKULLCANDY mark as it incorporates the mark in its entirety, while adding the generic top-level domain (“gTLD”) “.sale.”
2. Respondent has no rights or legitimate interests in the <skullcandy.sale> domain name. Respondent is not commonly known by the disputed domain name. See Compl., at Attached Annex J. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <skullcandy.sale> domain name. Rather, the domain name resolves to an active website prominently displaying Complainant’s marks and hyperlinks to third-party websites that feature goods that directly compete with Complainant’s products. See Compl., at Attached Annex I.
3. Respondent is using the <skullcandy.sale> domain name in bad faith. Respondent’s use of the domain to host competing hyperlinks serves as a disruption of Complainant’s legitimate business purposes. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Finally, Respondent had constructive and/or actual knowledge of the SKULLCANDY mark and Complainant’s rights therein, which is made clear by the fame and notoriety of Complainant’s mark and Respondent’s direct references to Complainant’s products (headphones) and Complainant’s other trademarks (HESH, INKD, MIX MASTER, UPROCK, SMOKIN’ BUDS, AVIATOR, and CHOPS) on Respondent’s website.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <skullcandy.sale> domain name is confusingly similar to Complainant’s SKULLCANDY mark.
2. Respondent does not have any rights or legitimate interests in the <skullcandy.sale> domain name.
3. Respondent registered or used the <skullcandy.sale> 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.”).
Complainant uses the SKULLCANDY mark in connection with its business of designing, manufacturing, marketing, advertising, and selling, among other things, headphones earphones, ear buds, and portable speakers. Complainant purports that it has registered the SKULLCANDY mark with the USPTO (e.g., Reg. No. 3,168,695, registered November 7, 2006), and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the SKULLCANDY mark. See Compl., at Attached Annex D. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in the mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See W.W Grainter, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the SKULLCANDY mark.
Next, Complainant argues that Respondent’s <skullcandy.sale> domain name is confusingly similar to the SKULLCANDY mark as it incorporates the mark in its entirety, while adding the gTLD “.sale.” Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Urban Outfitters, Inc. v. Domain Administrator, FA 1620565 (Forum June 12, 2015) (“[I]t is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the ‘.sale’ is of no consequence here.”). Therefore, the Panel agrees that Respondent’s <skullcandy.sale> domain name is confusingly similar to the SKULLCANDY mark under Policy ¶ 4(a)(i).
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 <skullcandy.sale> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent licensed to use the SKULLCANDY mark. The WHOIS information regarding the disputed domain name lists “WHOISGUARD PROTECTED” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <skullcandy.sale> domain name. Rather, Complainant contends that the domain name resolves to a webpage prominently displaying Complainant’s marks with hyperlinks to third-party websites that feature goods that directly compete with Complainant’s products. See Compl., at Attached Annex I. Panels have found that such competitive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use”). Therefore, this Panel agrees that Respondent’s use of the <skullcandy.sale> 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 argues that Respondent’s use of the <skullcandy.sale> domain serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Annex I. Panels have agreed that 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 Health Republic Insurance Company v. Above.com Legal, FA 1622088 (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).”). Therefore, this Panel agrees that Respondent’s use of the <skullcandy.sale> domain falls within the purview of Policy ¶ 4(b)(iii).
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel again notes that Complainant argues that the domain name resolves to an active website displaying Complainant’s SKULLCANDY mark and other marks Complainant contends it owns. See Compl., at Attached Annex I. The Panel agrees with Complainant and holds that Internet user confusion subsequently results from the aforementioned domain name, and it finds that Respondent’s behavior constitutes bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Complainant also contends that Respondent had constructive and/or actual knowledge of Complainant's rights in the mark because of the fame and notoriety of Complainant’s mark and direct references to Complainant’s products (headphones) and Complainant’s other trademarks (HESH, INKD, MIX MASTER, UPROCK, SMOKIN’ BUDS, AVIATOR, and CHOPS) on Respondent’s website. The Panel may find that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name and may find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skullcandy.sale> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 29, 2016
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