Wiluna Holdings, LLC v. weiwei li / shijuegongzuoshi
Claim Number: FA1805001787495
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is weiwei li / shijuegongzuoshi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2018; the Forum received payment on May 18, 2018.
On May 25, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@clips4sale8.com, postmaster@clips4sale88.com, postmaster@clips4salevideos.com. Also on May 29, 2018, 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 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 to Complainant.
A. Complainant
Complainant, Wiluna Holdings, LLC, is the owner and operator of the website operating at the URL www.clips4sale.com. The CLIPS4SALE website features adult-entertainment oriented media offered under Complainant’s trademarks. Complainant has rights in the CLIPS4SALE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,554,200, registered Dec. 30, 2008). Respondent’s <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names are confusingly similar to Complainant’s CLIPS4SALE mark because Respondent incorporates Complainant’s mark in its entirety in each domain name, and adds a generic term or numbers.
Respondent lacks rights and legitimate interests in the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names because Complainant has not granted Respondent permission to use its marks nor is Respondent commonly known by the disputed domain name. Respondent fails to
use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to divert internet traffic to third party website in order to generate revenue.
Respondent registered and is using the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names in bad faith. Respondent is using the disputed domain names to pass off as Complainant. Additionally, Respondent is using the disputed domain names to attract internet traffic to third party websites to generate revenue. Further, Respondent has engaged in the practice of typosquatting by modifying Complainant’s trademarks.
B. Respondent
Respondent failed to submit a response. The Panel notes that Respondent registered the <clips4salevideos.com> domain name on July 12, 2017, <clips4sale88.com> on February 9, 2018, and <clips4sale8.com> on August 20, 2017.
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.”).
Identical or Confusedly Similar
Complainant asserts rights in the CLIPS4SALE mark based on registration with the USPTO. Registration with the USPTO may be sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its’ USPTO registration (e.g., Reg. No. 3,554,200, registered Dec. 30, 2008). Therefore, the Panel concludes that Complainant has rights in the CLIPS4SALE mark under Policy
¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names are confusingly similar to Complainant’s CLIPS4SALE mark. Specifically, Complainant argues that Respondent incorporates Complainant’s mark in its entirety in the domain name, adds numbers, and a generic term. The addition of a number and a generic term are not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 104132 (Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the entire CLIPS4SALE mark in its’ domain name, adds the numbers “8” and “88” and adds the generic term “videos.” Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark under Policy
¶ 4(a)(i) analysis.
Complainant argues that Respondent lacks rights in the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names, because Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use its mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify the Respondent and to prove it is not commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization from Complainant to use its’ mark may be further evidence that Respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant provides the WHOIS information which identifies the Respondent as “weiwei li.” Furthermore, Complainant argues that Respondent was not authorized to use the CLIPS4SALE mark in any way. Therefore, the Panel concludes that the Respondent lacks rights and legitimate interests in the disputed domain names
Next, Complainant argues that Respondent fails to use the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent attempts to benefit from the goodwill associated with Complainant’s mark by passing off as Complainant. Use of a domain name to pass off as a complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial use under Policy ¶¶ 4(c)(i) and (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial of fair use under Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy 4(a)(ii).
Complainant alleges that Respondent registered and is using the <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names in bad faith. Specifically, Complainant argues that Respondent is using the disputed domain names to pass off as Complainant for Respondent’s commercial benefit. Use of a domain name to pass off as complainant in order to commercially benefit may be evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screen shots of Respondent’s resolving webpage which shows Complainant’s mark displayed along with video and image downloads that are almost identical to those offered by complainant. Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thus, Complainant has also 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 <clips4sale8.com>, <clips4sale88.com> and <clips4salevideos.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 28, 2018
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