WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Idle Media, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Andrew Wisdom
Case No. D2017-0267
1. The Parties
Complainant is Idle Media, Inc. of Leesport, Pennsylvania, United States of America ("US"), represented by Adelman Matz P.C., US.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Andrew Wisdom of Los Angeles, California, US.
2. The Domain Name and Registrar
The disputed domain name <datpiff.site> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 16, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended the Complaint on February 21, 2017.
The Center verified that the Complaint together with the amended 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 February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 17, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 28, 2017. 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 an online media and entertainment company engaged in website development. It has operated the DatPiff website ("www.datpiff.com") since November 25, 2005, to provide new music and mix tapes to consumers. Complainant advertises its services through social media outlets such as Facebook and Twitter, and the DatPiff website has had over three million unique visitors.
Complainant owns US trademark registrations for DATPIFF and the associated logo. Complainant's earliest registration for the DATPIFF mark was on May 1, 2012, and the DATPIFF logo was registered on November 3, 2015.
Respondent registered the disputed domain name <datpiff.site> on September 28, 2016. The disputed domain name resolves to a website that appears to offer music and mix tapes to consumers and that not only displays the DATPIFF logo but also displays the website's content in substantially the same manner as it appears on Complainant's DatPiff website.
A related domain name <datpiff.info>, also registered to an Andrew Wisdom, was the subject of a previous UDRP proceeding commenced by Complainant, which resulted in a determination in favor of a transfer of the disputed domain name, see Idle Media, Inc. v. Andrew Wisdom, WIPO Case No. D2016-1945. There, as here, Respondent failed to respond to the Complaint. The "www.datpiff.info" website and the "www.datpiff.site" website appear identical in their use of the DATPIFF logo and in their layout and design. The disputed domain name <datpiff.site> was registered four days after Complainant filed its complaint in the <datpiff.info> UDRP proceeding. It appears that Respondent moved the website associated with <datpiff.info> to the disputed domain after Complainant initiated the proceeding involving <datpiff.info>.
5. Parties' Contentions
Complainant asserts that its widespread, long standing, and exclusive use of the DATPIFF mark has rendered the mark famous and that the disputed domain name <datpiff.site> is confusingly similar to the DATPIFF mark as it incorporates the mark in its entirety.
Complainant argues that Respondent has no rights or legitimate interests in the domain name as (1) Respondent is making unauthorized use of the DATPIFF mark, (2) Complainant was using its DATPIFF mark long before Respondent registered the disputed domain name, and (3) Respondent is using the disputed domain name to pass off its website (which contains content copied from Complainant's website) as that belonging to or associated with Complainant's website.
To support its allegation of bad faith registration and use, Complainant points to Respondent's copying of the content of Complainant's website and argues that Respondent is attempting to attract Internet users and advertisers to its website for commercial gain at Complainant's expense. For example, Complainant contends that Respondent invites visitors to the "www.datpiff.site" website to advertise on the site using language copied from Complainant's website and with Respondent's contact information substituted for that of Complainant. Moreover, Complainant argues that Respondent registered the disputed domain name to prevent Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct, as shown by Respondent's registration of two domain names incorporating the DATPIFF mark (the currently disputed domain name <datpiff.site> and the previously disputed domain name <datpiff.info>).
Respondent did not respond to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the DATPIFF mark in view of its trademark registrations. These marks are recognizable in the disputed domain name. In relevant part, the disputed domain name is identical to Complainant's registered DATPIFF mark as the disputed domain name reproduces the trademark fully and the addition of the ".site" generic Top-Level Domain is typically disregarded when assessing confusing similarity. In any event, ".site" does nothing to ameliorate the entire reproduction of the DATPIFF trademark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to the disputed domain names.
B. Rights or Legitimate Interests
The evidence of record establishes that Complainant has not authorized or licensed Respondent to use its DATPIFF trademark or apply for or use any domain names incorporating those marks. Complainant had rights in the DATPIFF trademark before Respondent registered the disputed domain name. Considering that Complainant has been operating its "www.datpiff.com" site to offer new music and mix tapes since 2005, an individual would not choose to use the term "datpiff," especially in conjunction with the offering of music and mix tapes, unless seeking to create an impression of an association with Complainant. This conclusion is undergirded by the showing that the website to which the disputed domain name resolves copies Complainant's DATPIFF logo and the layout of its website. Respondent's copying supports a finding that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate or fair use of the disputed domain name.
Overall, the Panel concludes that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, which shifts the burden to Respondent to indicate that it has a right to or a legitimate interest in the disputed domain names. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Respondent did not rebut the prima facie case.
Accordingly, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the disputed domain names in bad faith. Complainant's DATPIFF mark has been in use since 2005 and has been registered since 2012. As demonstrated by Respondent's copying of Complainant's "www.datpiff.com" website, Respondent was manifestly aware of the DATPIFF mark, Complainant's website and rights when he registered the disputed domain name. In fact, it is fair to infer that Respondent registered the disputed domain name after he learned of Complainant's trademark rights when Complainant filed the prior UDRP complaint seeking transfer of the <datpiff.info> domain name.
The Panel also finds bad faith use. Respondent used the disputed domain name in connection with a website that imitated Complainant's own website in an attempt to misdirect visitors from Complainant's website and drum up advertising revenue at Complainant's expense. This demonstrates an intent to attract Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark for Respondent's own commercial gain. Policy, paragraph 4(b)(iv). Moreover, the evidence supports the inference that Respondent registered the disputed domain name to serve as a substitute for the <datpiff.info> domain name, which he anticipated losing as a result of the prior UDRP case. This manifest attempt to circumvent the prior UDRP case is egregious bad faith use.
Accordingly, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(iii) of the Policy with respect to the disputed domain name <datpiff.site>.
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 <datpiff.site> be transferred to Complainant.
Lawrence K. Nodine
Date: April 11, 2017