WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Svanaco, Inc. d/b/a Americaneagle.com v. Laura Yun, Offshore Hosting Solutions Ltd.
Case No. D2016-0526
1. The Parties
The Complainant is Svanaco, Inc. d/b/a Americaneagle.com of Des Plaines, Illinois, United States of America (“US”), represented internally.
The Respondent is Laura Yun, Offshore Hosting Solutions Ltd. of Victoria, Seychelles.
2. The Domain Names and Registrar
The disputed domain names <americaneagle-webdesign.com>, <americaneagleweb-design.com>, and <americaneaglewebdesignreviews.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016.
On March 21, 2016, the Complainant notified the Center that it had become aware of two additional domain names owned by the R and requested that they be added to the Complaint. On March 22, 2016, the Center replied, noting that the Rules did not specifically provide for a Complaint to be amended after the commencement of proceedings. The Center observed that it would be for the Panel to determine whether or not to accept the addition of new domain names to the Complaint and order further procedural steps, if any.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on April 25, 2016. 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
Since 1996, the Complainant, a US corporation, has offered web design, development and maintenance services under the name “Americaneagle.com”. The Complainant’s main website is at “www.americaneagle.com”.
The Complainant owns US trade mark no. 4421923 for AMERICANEAGLE.COM filed March 21, 2013, and registered on October 22, 2013, in international classes 35 and 42.
The disputed domain names were registered on the following dates:
<americaneaglewebdesignreviews.com>: February 8, 2016
<americaneagle-webdesign.com>: February 22, 2016
<americaneagleweb-design.com>: February 23, 2016
Two of the disputed domain names, <americaneagle-webdesign.com> and <americaneagleweb-design.com>, have been used for websites strongly criticizing the Complainant, part of a wider campaign against the Complainant which ranges across many websites, including some located at domain names similar to the disputed domain names.
There is no website associated with <americaneaglewebdesignreviews.com>.
On March 3, 2016, the US District Court for the Northern District of Illinois, Eastern Division issued a Temporary Restraining Order (“TRO”) enjoining Jonathan Brand and “any other persons who are in active concert” from publishing under various domain names including one of the disputed domain names - <americaneagleweb-design.com> - and any similar domain names.
On March 8, 2016, the court entered a default judgment against Jonathan Brand in relation to defamatory content regarding the Complainant on various websites similar to the disputed domain names, but not the disputed domain names themselves.
The Respondent was found to have registered and used at least two other domain names in bad faith. See Quicken Loans Inc. v. Laura Yun / Offshore Hosting Solutions Ltd., NAF Claim Number: 1644564 (<cliknloan.org>) and F. Hoffmann-La Roche AG v. Domain ID Shield Service / Laura Yun, WIPO Case No. D2014-1950 (<diazepam-valium.com>).
5. Parties’ Contentions
The disputed domain names are identical and/or confusingly similar to the Complainant’s trade mark.
The disputed domain names incorporate the Complainant’s trade mark. By adding service descriptions relevant to the Complainant’s business, the Respondent is setting out to divert the Complainant’s customers and potential customers to the Respondent’s websites.
The Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain names are not being used for a bona fide offering of goods or services. The Respondent has not been authorized to use the Complainant’s trade mark and is not offering web design services on any of the sites located at the disputed domain names.
The Respondent has not been commonly known by the disputed domain names. They are being used solely to redirect legitimate search traffic to sites that exist solely to harass the Complainant and its counsel.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark at issue. The Respondent is using the disputed domain names to create a collection of websites which tarnish the Complainant’s trade mark since they include irrelevant statements and personal attacks against the owners of the Complainant, which have nothing to do with web development.
The disputed domain names were registered and used in bad faith.
The Respondent registered the disputed domain names primarily for the purpose of disrupting a competitor.
The Respondent is openly defying an order of the US District Court.
The Complainant forwarded the TRO to the Respondent on March 9, 2016 and has still not received a response, demonstrating the Respondent’s bad faith in permitting the publications to continue in contravention of the TRO.
The Respondent has admitted that the disputed domain names are being used to increase site rankings of the Respondent’s websites in open defiance of the TRO. The Complainant has been forced to spend money on reputation management services.
The disputed domain names are being used in a deceptive manner to harass and disrupt the Complainant’s legitimate business activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Court Proceedings
Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings.
Paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“A panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding.
Courts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a de novo hearing of the case under national law.”
Based on the information made available to the Panel regarding the above-mentioned US District Court case (“the US Case”), the Panel does not propose to suspend or terminate this proceeding for the following reasons.
First, it appears from the information made available to the Panel that only one of the three disputed domain names is in issue in the US Case.
Second, the defendant in the US Case is not the same as the Respondent. The exact connection between these parties has not been explained.
Third, the US Case does not appear to include any request / order to transfer domain names.
Fourth, neither of the Parties has requested suspension or termination of this proceeding in light of the US Case.
The Panel will therefore proceed to a decision.
B. Amendment of Complaint
The Panel has decided to reject the Complainant’s request, made after service of the Complaint, to amend the Complaint to add two additional domain names owned by the Respondent which had recently come to the Complainant’s attention.
If allowed, this would not simply be a question of inserting two new domain names into the Complaint. The Complaint would also need to be amended in detail to include additional facts, arguments and evidence relevant to the two domain names. Thereafter the Amended Complaint would have to be served on the Respondent, thereby extending the date for a Response. In the Panel’s view, all of this would inject significant complication and delay into a process which is intended to be relatively straightforward and expeditious. See paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
C. Identical or Confusingly Similar
The Complainant has rights in the mark AMERICANEAGLE.COM by virtue of its registered trade mark for that term.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s trade mark is undoubtedly recognizable in each of the disputed domain names. For the purpose of the Policy, the domain name suffixes in both the trade mark and the disputed domain names can be disregarded.
And, as indicated in paragraphs 1.2 and 1.9 of the WIPO Overview 2.0, the various descriptive terms “webdesignreviews”, “-webdesign” and “web-design” are insufficient to avert a finding of confusing similarity. The Complainant’s mark remains the first and dominant component in each disputed domain name.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
There is no evidence of a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain names and so paragraphs 4(c)(i) or 4(c)(ii) of the Policy do not apply.
Is the Respondent “making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” in accordance with paragraphs 4(c)(iii)) of the Policy?
While there is no evidence that the disputed domain name <americaneaglewebdesignreviews.com> has ever been used, the Respondent has used the other two disputed domain names, <americaneagle-webdesign.com> and <americaneagleweb-design.com>, for websites apparently criticizing the Complainant.
The Panel subscribes to “View 1”, expressed in paragraph 2.4 of WIPO Overview 2.0, that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant's trade mark. While these are potentially legitimate activities, that is not the case here as the Respondent has used domain names which are closely aligned to the Complainant’s trade mark and which are likely to make a misrepresentation to users that their associated websites are connected with the Complainant. In particular, the Respondent has used domain names consisting purely of the Complainant’s trade mark together with the descriptive terms which describe the Complainant’s services.
Accordingly, the Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
As explained above, the Panel considers that the Respondent has used for its purported criticism websites domain names which it does not have a right or legitimate interest in using in such a manner. As the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain names would “catch by surprise” visitors intending to reach the Complainant’s website. In the Panel’s view, the foregoing constitutes registration and use in bad faith.
The Panel emphasizes that it makes no finding – and it is not qualified to make a finding – in relation to the content of the criticism websites, including as to whether or not any part is defamatory under applicable national law. The issue here is solely the nature of the disputed domain names which the Respondent has opted to register and use in conjunction with its websites within the confines of the Policy.
As to the third domain name <americaneaglewebdesignreviews.com>, which has not been used for a website, the panel in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panel went on to say that
“in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
Here, the Panel notes that <americaneaglewebdesignreviews.com> was registered at around the same time as the two other disputed domain names, which themselves were part of the extensive campaign being waged against the Complainant. That campaign included at least two other domain names, not part of this case, which also comprised the Complainant’s mark followed by the word “reviews” and which were used to attack the Complainant. The Panel therefore considers it highly likely that <americaneaglewebdesignreviews.com> was also registered as part of the campaign and not with a view to providing a website with genuine customer reviews of the Complainant’s services, as the domain name implies. The Panel is also mindful that the Respondent has been found to have registered and used at least two other domain names in bad faith under the Policy. For the above reasons, the Panel concludes that the disputed domain name <americaneaglewebdesignreviews.com> constitutes a passive holding in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <americaneagle-webdesign.com>, <americaneagleweb-design.com>, and <americaneaglewebdesignreviews.com> be transferred to the Complainant.
Date: May 12, 2016