WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eTech Marketing, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / JDS Learning BVBA, Ann Decock, / JDS, Patrick Van Wynsberghe
Case No. D2013-1871
1. The Parties
The Complainant is eTech Marketing, Inc. of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / JDS Learning BVBA, Ann Decock of Aalter, Belgium / JDS, Patrick Van Wynsberghe of Aalter, Belgium.
2. The Domain Names and Registrar
The disputed domain names <allover30freepics.com>, <allover30matures.com> and <freeallover30pics.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant submitted the amended Complaints to the Center on November 15 and November 21, 2013.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 31, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. the Complainant is a US company providing adult entertainment material by reference to the name “AllOver30”;
2. the Complainant is the owner of United States Federal Trade Mark Registration No. 3,284,875 for AllOver30 registered August 28, 2007.
3. the disputed domain names were registered no earlier than July 2013;
4. the disputed domain names previously resolved to websites which adopted images and material from the Complainant’s website;
5. there has been no commercial or other relationship between the parties and the Complainant has authorized the Respondent to use its trademark or register any domain name incorporating its trade mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in ALLOVER30 and alleges that the disputed domain names are confusingly similar to its trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary issue: Respondent’s identity
The Panel notes that this Complaint has been filed against three domain names. Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. In this case, the underlined registrants are “JDS Learning BVBA” or “JDS”. The Panel is satisfied that the disputed domain names are registered by the same entity based in Belgium and that they are subject to common control.
Substantive Elements of the Policy
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a Response. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the domain name is identical or confusingly similar to the trade mark.
For the purposes of paragraph 4(a)(i) of the Policy, it is accepted that a trade mark registered with a national authority is evidence of trade mark rights1. The Panel therefore accepts that the Complainant has trade mark rights in ALLOVER30 by reason of its United States Federal registration.
The Panel finds all of the disputed domain names to be confusingly similar to the trade mark. The disputed domain names takes the whole of the trade mark and merely add non-distinctive material in the form of the generic top-level domain, “.com”,2 plus one or other of the terms “pics”, “freepics” or “matures” which all allude to the website content.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to all three disputed domain names.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests3.
Notwithstanding the lack of a Response to the Complaint, 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 trademark or service mark at issue.”
The publicly available WhoIs database does not support any conclusion that the Respondent might be commonly known by any of the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not.
Furthermore, the disputed domain names resolve to websites which use material from the Complainant’s website. In the result, there is no evidence of use of the disputed domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy with respect to all three disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy above. The Panel has already found the disputed domain names to be confusingly similar to the Complainant’s trade mark. The Panel accepts as more likely than not to be true that the Respondent receives or received revenue from the websites associated with the disputed domain names. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy in respect of all three disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <allover30freepics.com>, <allover30matures.com> and <freeallover30pics.com> be transferred to the Complainant.
Debrett G. Lyons
Date: January 13, 2014
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“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, NAF Claim No. 174052 (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)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.