WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Timeshift Media, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-1457

1. The Parties

The Complainant is Timeshift Media, Inc., United States of America (“United States”), represented by Stubbs Alderton & Markiles, LLP, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <pilateanytime.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2020, 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 the Complainant on June 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on June 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.

The Center appointed Sok Ling MOI as the sole panelist in this matter on July 28, 2020. 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 provides, via an Internet platform, subscription-based access to a collection of resource videos and tutorials for practising and teaching pilates. The Complainant claims to have used the PILATES ANYTIME trade mark for 10 years. It owns the domain name <pilatesanytime.com> which its uses to connect to its website.

The Complainant is also the owner of a composite trade mark comprising the words “Pilates Anytime” with a design, details as follows:

The disputed domain name was registered on July 22, 2019. It resolves to a website displaying a collection of click-through links (such as “Pilates Anytime”, “Pilates Workout”, “Pilates Classes”, “Pilate Studio Near Me”, “Pilates Exercise Classes Near Me”) which divert Internet users to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is a misspelling and thus confusingly similar to its PILATES ANYTIME trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

The Complainant requests for the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in PILATES ANYTIME by virtue of its use and registration of the same as a trade mark.

The disputed domain name <pilateanytime.com> is a typographical variant of the Complainant’s trade mark PILATES ANYTIME and the Complainant’s domain name registration <pilatesanytime.com>. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains sufficiently recognizable in the disputed domain name. In this case, the typographical error (the omission of a single letter “s”) does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not in this case impact the above analysis.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the PILATES ANYTIME trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “Carolina Rodrigues”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “pilate” or “anytime” or its combination.

According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring a collection of click-through links which redirect to third party websites, some of which are associated or are in competition with the Complainant. Presumably, the Respondent receives pay-per-click fees from the linked websites. The consensus view of previous UDRP panels is that use of a domain name to post pay-per-click links may be permissible in some circumstances, but would not of itself automatically confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the disputed domain name. This may be applicable when the domain name is a dictionary word, but not where it is, as here, a typo of a trade mark; the Panel also notes in this regard that the particular typo removing the “s” in “pilates” renders the term “pilate” which is not an ordinary dictionary word (nor when combined with “anytime”). In this case, the Panel finds such use of the disputed domain name does not confer any rights or legitimate interests on the Respondent.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain name. Since the Respondent did not respond to the Complaint or provide any evidence to support a right or legitimate interest in the disputed domain name by the Respondent, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the

registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Considering the nature of the Complainant’s business model, a cursory Internet search would have disclosed the PILATES ANYTIME trade mark and its use by the Complainant. A presumption can be made that the Respondent was aware of the Complainant and its trade mark when she registered the disputed domain name. As such, the Respondent’s registration of the disputed domain name appears to have been made in bad faith.

According to the evidence submitted by the Complainant, the disputed domain name resolves to a website which appears to be a parking page featuring a collection of click-through links which divert Internet users to third party websites. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. See WIPO Overview 3.0, section 3.5.

A presumption may be made that the Respondent stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such use of the disputed domain name clearly seeks to capitalise on the trade mark value of the Complainant’s PILATES ANYTIME trade mark resulting in misleading diversion.

In registering the disputed domain name that is a typographical variant of the Complainant’s trade mark and domain name, and using it to offer sponsored links or redirect Internet users to websites offering competitive goods and services, the Respondent deprives the Complainant of the opportunity to sell its goods and services to prospective clients who are clearly looking for the Complainant and, at the same time, promotes goods and services offered by competitors.

The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and for commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel moreover notes that the Respondent has been involved in scores of UDRP cases and is therefore engaged in a pattern of abusive registrations, just to name a few examples: Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2882; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0333; Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0812; Sanofi v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-2654; and The Commissioners for HM Revenue and Customs v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2068.

Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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, <pilateanytime.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: August 11, 2020