WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Angela D. Justice-Burrage, dba A.D. Justice v. Al Perkins
Case No. D2016-0545
1. The Parties
The Complainant is Angela D. Justice-Burrage, dba A.D. Justice of LaFayette, Georgia, United States of America ("United States"), self-represented.
The Respondent is Al Perkins of St. Helier, Jersey, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("Great Britain").
2. The Domain Name and Registrar
The disputed domain name <adjusticebooks.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2016, 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.
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 April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 25, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on April 28, 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
The Complainant is a novelist who writes under the name of "ADJustice" and who has published a number of works of fiction in hard copy which are also downloadable in soft copy and are available for sale over the Internet through such bookseller sites as "www.amazon.com".
The Respondent registered the disputed domain name on November 22, 2013 and appears to operate in business as a domain name broker.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical to the trading name and trade mark of the Complainant.
The Complainant submits that the Respondent who is a domain name broker has not used the disputed domain name in connection with a bona fide offering of goods and services. She submits that the Respondent is in fact in the business of registering important domain names for potential re-sale and the fact that he owns a significant number of domain names (she submits more than 1,200 currently) and attempted to sell the disputed domain name to her for USD 6,700, a sum many times the registration cost, supports this assertion.
The Complainant notes that she is an author and that the disputed domain name is her personal name and identifier in trade for her work. She maintains that she has developed a reputation as an author and notes that her Facebook page is operated under the name or style, AD Justice has a following of approximately 13,000 fans.
She submits that the Respondent would have been aware of her name and books by virtue of a simple Internet search and that initially he had the disputed domain name resolving to a pornographic site which had a significant detrimental impact on the Complainant's reputation and livelihood. Recently the Complainant notes that the Respondent redirected the disputed domain name to a pharmaceutical advertisement.
In relation to bad faith the Complainant notes that the Respondent registered the disputed domain name well after the Complainant had published a number of her works under the AD Justice name or style and after she had been in business for a substantial period of time and that the Respondent should have been aware of her name based on a very simple Internet search.
Before filing this Complaint the Complainant notes that she corresponded with the Respondent and advised him of her rights and requested the transfer of the disputed domain name, however, he just wrote back offering to sell it to her for USD 6,700, a sum that she says is many times the registration cost.
The Complainant says that the Respondent acquired the disputed domain name primarily for the purpose of resale at a profit and that he has registered a significant amount of domain names for resale, with no regard as to whether they may be generic or identical to trade marks or may otherwise give rise to a misrepresentation to the public in the course of trade. She notes that the Respondent has previously been found to engage in this conduct by the Panel in Groupe Mutuel v. Al Perkins, WIPO Case No. D2013-1606.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is a published author and novelist operating under the name "AD Justice". This name is essentially an abbreviation of her real name, "Angela D. Justice-Burrage". The Panel considers that the "AD Justice" pen name enjoys a high level of distinctiveness as the name of a writer of popular fiction.
She is a published author with several novels available for sale under the same name A.D. Justice. She notes in support of her claim to a trade reputation, that currently her Facebook page indicates a following of more than 13,000 fans and she has provided in support details of various websites that feature her novels for sale and help demonstrate her fan following.
The Panel finds that in these circumstances, although the Complainant does not appear to own a registered trade mark right, she has used her distinctive pen name as a trading name and appears to have developed her trade reputation as a writer of popular fiction in this name to the extent that she can claim to own trade mark rights in her pen name "AD Justice" for the purposes of the Policy (see paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
The disputed domain name wholly contains the "AD Justice" name together with the generic word "books". This latter term is descriptive and a common English term and does not distinguish the disputed domain name. As a result the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent would have been aware of her name and books at the date of registration of the disputed domain name by virtue of a simple Internet search. She notes that initially after registration he redirected the disputed domain name to a pornographic site and subsequently to a site featuring a pharmaceutical advertisement and the Panel notes that it now redirects to a parody site at "www.fukitol.com". The Complainant submits that the Respondent has not otherwise used the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has on this basis made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing before the Panel to rebut the Complainant's case under this element of the Policy or to suggest that the Respondent has anything to do with the website to which the disputed domain name is currently redirecting. The mere fact that the disputed domain name is now redirecting to a parody site after having been used by the Respondent to redirect to sites for commercial purposes does not without more mean that the Respondent has ex-post facto somehow created a right or legitimate interest in the disputed domain name. Neither has the Respondent provided any explanation of his bona fides in redirecting the disputed domain name to this parody site.
It appears, as further described below, that the Respondent registered the disputed domain name purely as an asset for resale. The "ADJustice" name is by no means a common name and as noted under Part A above, in the Panel's view carries a high degree of distinctiveness. In these circumstances the Panel infers that the Complainant registered the disputed domain name with knowledge of the Complainant's rights and for resale which is not bona fide conduct. As a result the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts and the Panel is satisfied that by 2013, the year of registration of the disputed domain name, the Complainant had several publications under the "ADJustice" name. The Complainant submits that a simple Internet search at this time would have alerted the Complainant to her name and works. As set out above the Panel considers that the "ADJustice" name is sufficiently distinctive and, noting that the disputed domain name includes the term "books", considers that the Respondent did not register it by coincidence and that it is most likely that he chose to register the disputed domain name with knowledge of the Complainant's rights and for the purposes of potential resale. Accordingly the Panel finds that the Respondent registered the disputed domain name in bad faith.
The Complainant submits that the disputed domain name initially resolved to a pornographic site and subsequently to a site featuring a pharmaceutical advertisement. Although no evidence has been provided in support of this submission, neither has the Respondent sought to deny this claim. As a consequence the Panel accepts the Complainant's submission and finds that the Respondent has used the disputed domain name intentionally to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark. This is not consistent with use in good faith and under paragraph 4 (b)(iv) of the Policy amounts to evidence and registration in bad faith.
In addition the Panel finds that the Respondent's demand of the Complainant in correspondence prior to these proceedings for payment of the sum of US 6,700 is indicative of bad faith.
Paragraph 4(b) (i) of the Policy provides that there is evidence of registration and use in bad faith where there are "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".
The Panel notes that the sum sought by the Respondent is very considerably more than the costs of registration of the disputed domain name and the Respondent's demand and discussion in pre-dispute correspondence with the Complainant also supports the inference that the Respondent, who's business model is to buy and resell domain names at a profit, was aware of this and appears to consider that he has the right to proceed in this manner regardless of the Complainant's trade mark rights. The Panel notes in passing that the Respondent has previously been found to engage in very similar conduct in Groupe Mutuel v. Al Perkins, WIPO Case No. D2013-1606, and finds that his conduct in the current case also amounts to evidence of registration and use in bad faith under paragraph 4(b)(i) of the Policy.
As a result the Panel finds that the Respondent's conduct in registering and using the disputed domain name amounts to cybersquatting under the Policy. Accordingly, the Complaint succeeds under this element 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 name <adjusticebooks.com> be transferred to the Complainant.
Date: May 1, 2016