Steven Gordon v. Oleg Belan
Claim Number: FA2004001890577
Complainant is Steven Gordon (“Complainant”), represented by Bradley P. Hartman of Hartman Titus PLC, Arizona, USA. Respondent is Oleg Belan (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <joking.com> (“Domain Name”), registered with Name.com, Inc.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2020; the Forum received payment on April 1, 2020.
On April 1, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <joking.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 April 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2020 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@joking.com. Also on April 2, 2020, 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 April 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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
Complainant, Steven Gordon, owns and operates a website known as <joking.com> and a YouTube channel known as jokingdotcom. Complainant has common law rights in the JOKING.COM and JOKINGDOTCOM marks through their use in commerce since 1997. Respondent’s <joking.com> domain name is identical to Complainant’s JOKING.COM mark because the Domain Name is the same as Complainant’s JOKING.COM mark and domain name.
Respondent has no rights or legitimate interests in the <joking.com> domain name. Respondent is not authorized to use Complainant’s JOKING.COM mark and is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent acquired the Domain Name through hacking Complainant’s registrar account and other surreptitious means and then offered it for sale at auction days later.
Respondent registered and uses the <joking.com> in bad faith. Respondent gained unauthorized access to Complainant’s email address and/or registrar account, transferred the Domain Name to its own account without authorization, then offered the Domain Name for sale on public auction just days later.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JOKING.COM mark. The Domain Name is identical to Complainant’s JOKING.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts common law rights for the purposes of Policy ¶ 4(a)(i) in the JOKING.COM mark through its use as a badge of origin in trade and commerce since 1998.
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
It is apparent from Complainant’s website and the documents annexed to the Complaint that Complainant has operated a business under the JOKING.COM mark for 22 years through which Complainant provides entertainment services and information to the public including services of a humorous nature. This business has operated from the Domain Name and from Complainant’s YouTube channel which since 2008 operates under the nearly identical name JOKINGDOTCOM. Complainant has 3.5 million video views on his YouTube channel. The Panel is satisfied that Complainant’s continuous use of the JOKING.COM mark in trade over 22 years is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the JOKING.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <joking.com> domain name is identical to Complainant’s JOKING.COM mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the JOKING.COM mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Oleg Belan” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that Respondent gained unauthorized access to Complainant’s registrar account, transferred the ownership of the Domain Name to Respondent, and then posted the domain name for sale on a public auction site for an amount well in excess of any out of pocket costs just days later. Such conduct is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”);
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent acquired the Domain Name, which was approximately March 1, 2020 Respondent had actual knowledge of Complainant’s JOKING.COM mark. In the absence of any response by Respondent, the Panel accepts Complainant’s evidence that Respondent fraudulently hacked into Complainant’s account for the purpose of transferring the Domain Name to itself (without Complainant’s permission), in order to sell the Domain Name on a public website for a profit. Such conduct could not be carried out other than with awareness of Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent because Respondent, immediately after fraudulently transferring the Domain Name from Complainant to itself, offered to sell the domain name (and indeed apparently sold the Domain Name for $5,750, though transfer has not occurred due to this issue) through a public auction. A general offer for sale can evince bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).. Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
Furthermore, a respondent stealing a registration from a complainant, as appears to have occurred in this case, also amounts to bad faith registration and use under the Policy. See Stepp Mfg. Co. Inc. v. Protection of Private Person, FA 1686520 (Forum Sept. 9, 2016) (finding bad faith registration and use under Policy ¶ 4(a)(iii) in a respondent’s apparent hacking into a complainant’s account and stealing registration of the disputed domain.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <joking.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 29, 2020
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