AmeriMark Direct, LLC and Anthony Richards v. Domain Admin / Hush Whois Protection Ltd.
Claim Number: FA1706001735800
Complainant is AmeriMark Direct, LLC and Anthony Richards (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <anthoneyrichards.com> and <wwwanthonyrichards.com>, registered with Key-Systems GmbH.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2017; the Forum received payment on June 14, 2017.
On June 19, 2017 and July 4, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <anthoneyrichards.com> and <wwwanthonyrichards.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 July 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2017 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@anthoneyrichards.com, postmaster@wwwanthonyrichards.com. Also on July 6, 2017, 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 July 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent.
A. Complainant
Complainant asserts trademark rights in ANTHONY RICHARDS and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark ANTHONY RICHARDS in connection with the retailing of women’s clothing;
2. the trademark ANTHONY RICHARDS is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 1,216,804, registered November 16, 1982;
3. the disputed domain name <anthoneyrichards.com> was registered May 9, 2016 on the <wwwanthonyrichards.com> domain name was registered on April 12, 2016;
4. the disputed domain names are for sale;
5. the disputed domain names direct Internet users to websites featuring generic links to third-party websites, some of which sell goods competitive with those sold by Complainant under the trademark; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
Multiple Complainants
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two named complainants but the Complaint does not address the Forum’s Supplemental Rule 1(e). All that is said is that AmeriMark Direct, LLC is the parent company of Anthony Richards.
Given that the USPTO trademark registration upon which the Complaint relies stands in the name of AmeriMark Direct, LLC it is unclear to the Panel why the subsidiary Anthony Richards has been included. All that can be assumed is that in some limited circumstances not present in this case that company might be regarded as the owner of any common law rights in the trademark. Its inclusion in this case as a complainant appears redundant and only adds some confusion to the final disposition of the domain names (see below). Nevertheless, for the purposes of Supplemental Rule 1(e), the Panel accepts the statement that the named complainants are part of the one company group and so treats them as a single entity. All references herein to “Complainant” are to be understood in that way.
Primary issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration the Panel is satisfied that it has trademark rights in ANTHONY RICHARDS (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The disputed domain names differ from the trademark in inconsequential ways. Panels agree that the gTLD “.com” can be ignored for the purposes of comparison (see PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)). Otherwise, in one case the domain name is a trivial misspelling of the trademark and, in the other, the domain name merely adds the non-distinctive integer, “www” to the trademark. None of those additions or alterations significantly alters the identity of the trademark which remains the distinctive element of the domain names (see, for example, The Toro Company v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1615881 (Forum May 27, 2015) finding <wwwtoro.com> confusingly similar to complainant's TORO mark; Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) finding <blankofamerica.com> confusingly similar to complainant’s BANK OF AMERICA mark).
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Exhibited to the Complaint are screenshots of the resolving webpages which display links for “Anthony Richards Dresses” but also, for example, “Ladies Clothing Online Cheap”. That use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use (see Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”; Coryn Group, Inc. v. Media Insight, FA 198959 (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).
Panel finds that Complainant has established a prima facie case. Accordingly, the onus shifts to Respondent to establish a legitimate interest in the domain names.
In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits screenshots of the webpages corresponding with the disputed domain names. Complainant argues that Respondent is using the resolving webpages to generate commission through the use of pay-per-click advertisements. Panel finds that is likely to be so and so finds that the object of the websites is monetary gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark (see Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anthoneyrichards.com> and <wwwanthonyrichards.com> domain names be TRANSFERRED from Respondent. The Panel notes that the Complaint does not state which of the two named complainants should be the transferee in the event that relief was granted.
Debrett G. Lyons, Panelist
Dated: July 30, 2017
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