ULIONA LIMITED v. Mohd Amaan
Claim Number: FA2305002043284
Complainant is ULIONA LIMITED (“Complainant”), represented by Nadezhda Minakova, Virginia, USA. Respondent is Mohd Amaan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <savefromus.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to Forum electronically on May 5, 2023; Forum received payment on May 5, 2023.
On May 5, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <savefromus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 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@savefromus.com. Also on May 8, 2023, 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.
A timely Response was received and determined to be complete on May 28, 2023.
On May 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Luz Helena Villamil J. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant and its predecessors have owned and operated the domain savefrom.net since March 12, 2008. Savefrom.net is a well-known and regarded service provider of its Product and tools that provides users the ability to download videos for their personal use under its trademark “SAVEFROM” (Reg. #4931103) (“SaveFrom Mark”). The Complainant has spent years, countless efforts, and money in building its good reputation among users which the Respondent is currently trying to fraudulently assume.
The Respondent’s <savefromus.com> domain provides products and tools identical and/or confusingly similar to that of the Complainant by virtue of using similar language and also providing users with the ability to download multimedia files onto their computer. The Respondent’s ownership and operation of the <savefromus.com> domain is clearly violating the Complainant’s intellectual property rights in its SaveFrom Mark by impersonating the Complainant’s brand, title, and name considering the Respondent’s confusingly similar, explicit, and identical use of the SaveFrom Mark to provide similar Infringing Products to that of the Complainant, i.e., video and multimedia downloads.
The Respondent has no rights or legitimate interests in respect to the <savefromus.com> domain because such use violates the Complainant’s intellectual property rights provided by the Complainant’s trademark “SAVEFROM” (Reg. #4931103) (“SaveFrom Mark”). Furthermore, the Complainant has not granted the Respondent any rights to use the SaveFrom Mark, or derivatives therefrom. The Complainant has been using the SaveFrom Mark well before any period in which the Respondent can claim rights or use related thereto. The Respondent’s use of the <savefromus.com> domain, especially in light of the identical and/or confusingly similar use of the SaveFrom Mark and the Infringing Products provided therewith, clearly are illegitimate and a means to deprive the Complainant of its right to the SaveFrom Mark, and to confuse consumers as to the origin of the Infringing Products rendered under the <savefromus.com> domain.
As evidenced by the Complainant’s longstanding use of the savefrom.net domain and registration of the SaveFrom Mark, the Respondent clearly has created and offered identical and/or confusingly similar Infringing Products with the <savefromus.com> domain to that of the Complainant in order to disrupt the business of the Complainant, a competitor, and to confuse and mislead consumers. Thus, the Respondent should be found to have registered and be using the <savefromus.com> domain in bad faith.
There is no doubt that the Respondent has intentionally registered the <savefromus.com> domain in order to receive the benefits of the Complainant’s good reputation and base of consumers. In light of the Complainant and its predecessors using the <savefrom.net> domain since 2008 and having registered the SaveFrom Mark since 2016, the Respondent intentionally registered the <savefromus.com> domain in order to provide identical and/or confusingly similar Infringing Products to that of the Complainant while also benefiting from the notoriety of the SaveFrom Mark.
B. Respondent
In turn, Respondent states that the domain name <savefromus.com> was registered on 15 October 2022. This domain consists of a generic word, for its inherent meaning, which aligns with the site's purpose and motto of encouraging online users to 'save their content from us.'
Respondent also contends that he firmly believes that the allegations of trademark infringement, specifically under UDRP Policy 3(b)(ix)-(1), (2), and (3), are baseless. His usage of this domain name does not intend to cause any confusion with the trademark 'SaveFrom' or to gain any undue advantages.
In addition, regarding the Complainant's claims that the domain <savefromus.com> is identical to 'SaveFrom.net,' Respondent states that they are distinct entities. Both domain names have different meanings and domain extensions, with the term 'savefromus' being a generic word. This dismisses any concerns of confusion between the domain names. The <savefromus.com> platform adheres to all guidelines for a safe and open internet and operates exclusively to provide legitimate services. Any superficial similarities in the domain names are merely coincidental.
Respondent asserts as well that his services differ significantly from those offered by the Complainant, and his website's content and design are entirely dissimilar from that of 'SaveFrom.net. The complainant's allegations of bad faith under UDRP Policy 4(a)(ii), 4(b), 4(b)(iii), and 4(b)(iv) are entirely unfounded and are an attempt to tarnish his reputation. <savefromus.com> is a legitimate website, and he did not acquire this domain to disrupt the complainant's business.
Lastly, Respondent states that The complainant's actions violate UDRP Policy rules, specifically 3(b)(xiii) regarding complaints with reasonable arguments, as well as Paragraph 15(e) of the UDRP Rules, which defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations and the Response to the Complaint, and based on all the documents, the Panel finds:
- That Complainant is the exclusive owner of the word mark SAVEFROM, which was duly registered in International Classes 9 and 42 with the United States Patent and Trademark Office on April 5, 2016 under No. 4931103, and it is in force until April 5, 2026;
- That the domain <savefrom.net> has been in use since March 12, 2008. Savefrom.net is a service provider that enables Internet users to download and save videos for their personal use content from Complainant’s website.
- That the disputed domain name <savefromus.com> was registered on October 15, 2022 and as confirmed by the Respondent himself, it identifies a website that allows users to download and stream images and videos from the internet or convert multimedia in various formats.
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.
Complainant demonstrated with the trademark registration copy submitted with the Complaint that it is the exclusive owner of the word mark SAVEFROM, which is registered at the U.S. Patent and Trademark Office. In addition, it was demonstrated that the mentioned trademark is used to provide a tool to allow downloading media files (e.g., by copying and pasting the URL to a YouTube video within SaveFrom’s Product) onto a computer for a user’s personal use.
The Panel concurs with Complainant in that the disputed domain name entirely comprises the trademark SAVEFROM, and even though the word US and the generic extension .com were added, the Respondent’s domain name <savefromus.com> does suggest that said Domain Name and the associated website are authorized by the Complainant. It is therefore evident for the Panel that the disputed domain is likely to be viewed as incorporating the SAVEFROM trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <savefromus.com> belongs to Complainant, or that there is a business association between the Complainant and the Respondent.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <savefromus.com> is confusingly similar to the trademark SAVEFROM owned by the Complainant.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized Respondent to use its SAVEFROM mark, (ii) Respondent has not been commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but is instead using the Domain Name to impersonate and compete with Complainant. As contended in the Complaint, since the Complainant and its predecessors have owned and operated the <savefrom.net> domain since March 12, 2008, and the SaveFrom Mark was registered on April 5, 2016, the Respondent could not be able to demonstrate his bone fide in registering and using the <savefromus.com> domain as of October 15, 2022.
In this concern, the Examiner does not accept at all the Respondent’s assertion that his usage of the domain name does not intend to cause any confusion with the trademark 'SaveFrom' or to gain any undue advantages. This panel has established and restated on several other cases that if a domain name entirely contains a previously registered trademark, the virtual identity is hardly the result of casualty, and instead, it evidences an activity performed to deliberately lead people to fall into confusion.
On the other hand, the Respondent states that both domain names have different meanings and domain extensions, with the term 'savefromus' being a generic word. This statement is simply an argument, but in addition this Panel considers it a real an insult to intelligence. ¿How can the names SAVEFROM and SAVEFROMUS have different meanings? How can the Respondent deny that the domain SAVEFROMUS entirely contains the registered trademark SAVEFROM? Such an argument, instead of convincing of a possible right of the Respondent, in fact confirms the bad faith of its actions. In addition, stating that SAVEFROMUS is a generic word is only a phrase with no evidentiary support. To the contrary, since according to the applicable regulations around the world no generic words can be registered as trademarks, the fact that SAVEFROM is a registered trademark totally contradicts the Respondent’s statement.
Lastly, it has been evidenced that <savefrom.net> is a service provider that enables Internet users to download and save videos for their personal use from Complainant’s website, while <savefromus.com> identifies a website that allows users to download and stream images and videos from the internet or convert multimedia in various formats. Attempting to state that such are unrelated activities is daring and disrespectful, and cannot be accepted as an argument but instead as a confession. As this Examiner sees it, when the Respondent registered the domain name <savefromus.com> he also took some time to prepare an argument to respond to any complaint based on the similarity of said domain with the registered trademark SAVEFROM and the website identified with the domain name <savefrom.net>.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <savefromus.com>
According to Paragraph 4(b) of the Policy, certain circumstances are evidence of bad faith in the registration and use of a given domain name. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site 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 site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name <savefromus.com> with the registered trademark SAVEFROM clearly evidences a prima facie intention of the Respondent to attract internet users for a commercial gain. As mentioned above the virtually identical reproduction of a third party’s distinctive trademark within a domain name is hardly the result of casualty, and to the contrary suggests a clear intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark, and thus benefit from said confusion.
Also as stated before, the fact that the Respondent uses the disputed domain name to identify a website that allows users to download and stream images and videos from the internet or convert multimedia in various formats, which happen to be the same services provided by the Complainant through its website <savefrom.net> does indicate that Respondent registered the disputed domain <savefromus.com> attempting to attract internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s trademark SAVEFROM. Thus, the bad faith in this behavior is undeniable.
Due to all the above, it is imperative to conclude that the disputed domain name <savefromus.com> was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
AS TO THE REVERSE DOMAIN NAME HIJACKING
The Respondent contends that the Complaint being decided “violate(s) UDRP Policy rules, specifically 3(b)(xiii) regarding complaints with reasonable arguments, as well as Paragraph 15(e) of the UDRP Rules, which defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process.”
The Examiner cannot overlook the foregoing serious and gratuitous accusation made by the Respondent. It is really needed to be very bold to make such a statement in a case like this, where in the presence of a trademark registration the domain registrant blatantly ignores said trademark and decides to use it for himself including it within his domain name. Accusing the Complainant of incurring in reverse domain name hijacking, i.e., in bad faith for filing a complaint to protect its trademark, is no doubt an act of insolence that cannot be accepted.
In addition, the Respondent must be made aware that the Complainant has filed in the past several domain name disputes on the grounds of its trademark SAVEFROM, all of them having been decided favourably. No doubt protection of the trademark SAVEFROM should be extended, and even more when individuals come out with reckless arguments as reverse domain name hijacking attempted in the present case by the Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <savefromus.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: 14 June 2023
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