WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uproxx Media Inc. v. Whois Privacy Corp
Case No. D2016-1894
1. The Parties
Complainant is Uproxx Media Inc. of Culver City, California, United States of America, represented by Matthew Polesetsky, United States of America.
Respondent is Whois Privacy Corp of Nassau, New Providence, the Bahamas.
2. The Domain Name and Registrar
The Domain Name <uproxxmedia.com> (the "Domain Name") is registered with TLD Registrar Solutions Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2016.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on November 3, 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
Complainant is the owner of, inter alia, the United States of America Trademark Registration No. 3683509 UPROXX, registered on September 15, 2009, which is used in connection with its online news and entertainment publishing services.
According to WhoIs the Domain Name was registered on September 25, 2015. The Domain Name resolves to a website with a similar look and feel to the website owned and operated by Complainant.
5. Parties' Contentions
Complainant states that it owns the UPROXX trade mark ("Complainant's Mark") and has exclusively and continuously used Complainant's Mark in connection with its online news and entertainment publishing services since at least November 2006. It also states that it owns trade mark registrations in the United States of America, Canada and the European Union for Complainant's Mark.
Complainant goes on to state that it operates its business through its website "www.uproxx.com" ("Complainant's Website"), and that its Website and <uproxx.com> domain name presence are essential to its business and online identity and brand. Complainant contends that Complainant's Website has been the subject of many articles from leading publications and the copyrighted content created by Complainant and distributed on Complainant's Website has been nominated for or won numerous awards, including most recently a CLIO award for its original series "Unchartered".
Complainant asserts that as a result of its extensive use, substantial advertising sales, and active promotion, Complainant's Mark has acquired invaluable fame, goodwill, and reputation in the United States of America and worldwide. It further asserts that through continuous and exclusive use of Complainant's Mark and Complainant's Website, it has established strong and distinctive rights in Complainant's Mark.
The Domain Name was registered on September 25, 2015, six years after Complainant's Mark was registered in the United States of America. Complainant submits that Complainant's Mark is not a descriptive or geographical term, nor is it a dictionary word with any definition in any language, but it encompasses its domain name and internationally registered trade marks.
Complainant asserts that as well as registering a confusingly similar domain name, Respondent has created a "copycat" website at the Domain Name, where Respondent has attempted to replicate the look, feel, and content of Complainant's Website in both editorial and video content.
Complainant contends that Respondent has made unauthorized use of Complainant's Mark in a manner that is likely to confuse, and likely has confused, consumers into falsely believing that Respondent is affiliated with, connected to, or sponsored by Complainant. Respondent's activities create the impression that the Domain Name is operated by or otherwise associated with or sponsored by Complainant. Complainant alleges that Respondent has infringed Complainant's Mark through its unauthorized and bad faith registration and use of the confusingly similar Domain Name, and has caused irreparable damage to Complainant's business.
Complainant asserts that Respondent has used Complainant's Mark without permission as it has not granted any license or consent, express or implied, to Respondent to use Complainant's Mark or to link the content contained on the Domain Name.
Complainant submits that the Domain Name is confusingly similar to Complainant's Mark and it includes wholly Complainant's Mark, and the addition of the word "media" does little to avoid consumer confusion.
Complainant suggests that Respondent's use of the Domain Name has no connection with a bona fide offering of goods and services and to its knowledge Respondent has not been commonly known by the Domain Name or by "uproxxmedia".
Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the <uproxxmedia.com> site by creating a likelihood of confusion with Complainant's Mark as to the source of Respondent's website or location or of a product or service on Respondent's website or location. It is submitted that as the content of the Domain Name does in some cases link to Complainant's Website, the likelihood of confusion is high for any potential users to believe that the initial landing page of the Domain Name is the legitimate location, format, and content of Complainant's website.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established use and registration of the trade mark UPROXX ("Complainant's Mark"). UPROXX comprises the entirety of Complainant's Mark. When combined with the word "media" it accurately describes the online news and entertainment publishing services provided by Complainant since in or about 2006.
Complainant contends that the Domain Name incorporates Complainant's Mark in its entirety, in conjunction with the descriptive term "media". Given that Complainant operates in the media business the addition of the generic term "media" to Complainant's Mark is not sufficient to hinder a finding of confusing similarity.
It is amply clear that the Domain Name includes Complainant's Mark and that Complainant's Mark is clearly identifiable within the Domain Name. Respondent has had the opportunity to do so but has not explained why it registered the Domain Name and why it contained Complainant's Mark. As a result, the Panel has no difficulty in finding that the Domain Name is confusingly similar to Complainant's Mark.
It is therefore found that Complainant has rights in Complainant's Mark, that Complainant's Mark comprises a dominant and confusing part of the Domain Name, and that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has created what it calls a "copycat" website at the Domain Name and that Respondent has endeavoured to replicate the look, feel, and content of Complainant's Website in both editorial and video content. This suggests that Respondent has set out to reproduce the look and feel of Complainant's Website.
Respondent is not affiliated with Complainant and has not been authorized by Complainant to use and register its trade marks or to seek the registration of any domain name incorporating Complainant's Mark or indeed to create a website which resembles Complainant's Website.
The registration and use of Complainant's Mark preceded the registration of the Domain Name. The Domain Name makes an obvious and direct reference to Complainant's Mark and goods and services supplied in the online news and entertainment publishing industry, which are associated with Complainant.
In the absence of any explanation from Respondent as to why and how Complainant's Mark found its way into the Domain Name and why Respondent has a legitimate, or indeed any, interest in the Domain Name, the Panel finds that Respondent's conduct is not consistent with relevant rights or legitimate interests on Respondent's part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and used the Domain Name in bad faith.
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant's Mark at the time it registered the Domain Name. The UPROXX trade mark has been in public use since 2006 and Complainant has successfully registered Complainant's Mark in the United States of America, Canada and the European Union. It is therefore reasonable to infer that Respondent knew or must have known of Complainant's Mark.
Given such use and registration of Complainant's Mark along with Respondent's failure to claim good faith use of the Domain Name, the Panel accepts Complainant's argument that Respondent selected the Domain Name to wrongly take advantage of Complainant's Mark by creating a likelihood of confusion with Complainant's Mark as to the source of Respondent's website or location or of its products or services.
This enables the Panel to conclude that the Domain Name was registered and used in bad faith in accordance with paragraph 4(a)(iii) 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 Domain Name <uproxxmedia.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: November 18, 2016