WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Peteski Productions, Inc. v. Host Master, 1337 Services LLC

Case No. D2020-2033

1. The Parties

The Complainant is Peteski Productions, Inc., United States of America (“United States or U.S”), represented by Jackson Walker, LLP, United States.

The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name, <drphil.club> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 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 August 4, 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020.

The Center appointed Tony Willoughby as the sole panelist in this matter on September 17, 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.

The invitation to the Complainant to amend the Complaint stemmed from the fact that the name of the registrant of the Domain Name was redacted in the publicly available WhoIs. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint adds as a Respondent the name of the entity identified by the Registrar as the underlying registrant. The Panel treats the underlying registrant, Host Master, 1337 Services LLC as the Respondent.

4. Factual Background

The Complainant is a Texas based television production company, which owns inter alia rights to the “Dr. Phil Show”, a daytime television show in the United States. The Complainant is the registered proprietor of various trade mark registrations protecting the “Dr. Phil” name, including by way of example United States Trade Mark Registration DR. PHIL No. 2,819,008 registered on March 2, 2004 for various services in classes 41 and 45 and with a first use in commerce claim dating back to 2002.

The Complainant operates a website connected to the domain name <drphil.com> featuring content relating to the show.

The Domain Name was registered on April 17, 2019. At the date of filing of the Complaint the website connected to the Domain Name featured what appear to be episodes from the Complainant’s Dr Phil television show. The pages are headed “Watch Dr Phil full episodes online free – Watch Dr Phil full episodes all seasons online for free. Dr Phil Today I Dr Phil McGraw I Watch Dr Phil episodes Dr Phil Show Dr Phil dr phil”. The Domain Name currently redirects to a website connected to the domain name, <drphil.to>, featuring similar content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its DR. PHIL registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the name, “drphil”, and the “.club” generic Top Level Domain (“gTLD”) identifier. For the assessment of identity or confusing similarity under this element of the Policy the gTLD identifier may be ignored where, as here, it serves no purpose beyond the technical one. The Domain Name is identical to the Complainant’s DR. PHIL trade mark, save that it omits the stop and space after the letter “r”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

That the Respondent is aware of the Complainant and its television show is self evident given the fact that the website to which the Domain Name was connected is devoted exclusively to material derived from the Complainant’s television show; as is the website to which the Domain Name now re-directs.

The Complainant asserts that it has no connection with the Respondent and has given the Respondent no authorization to use its DR. PHIL trade mark. The Respondent has not challenged the Complainant’s evidence in that regard. The Panel accepts as fact that the Respondent is an unauthorized user of the Complainant’s DR. PHIL trade mark.

An unauthorized user of another’s trade mark for a domain name may in certain circumstances be held to have a legitimate interest in respect of it. The issue is addressed in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’ [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

The Domain Name fails the Oki Data test in one important respect. While the website is devoted exclusively to material derived from the Complainant’s television show, there is nothing on the material before the Panel to demonstrate that the operator of the Respondent’s website is anybody other than the Complainant. It appears to be an official or authorized website of the Complainant. The website does not “accurately and prominently disclose the registrant’s relationship with the trademark holder”.

However, most cases determined in favour of respondents under the Oki Data test are cases where the Complainant’s trade mark is juxtaposed to a word such as “parts” or “repairs”, indicating a potentially legitimate service provided by the respondent in connection with the complainant’s products. In this case there is no additional material; simply the name “drphil” and the “.club” gTLD identifier. In the view of the Panel, the Domain Name is of such a nature that Internet users are likely to be deceived as to the nature of the website before they ever reach it. The Domain Name, of itself, is likely to indicate to visitors that it is an official website of or authorized by the Complainant. It impersonates the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies upon sub-paragraph (iv), which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.”

As can be seen from C above, the Panel has found that in registering and using the Domain Name as it has, the Respondent has impersonated the Complainant. It was clearly intentional. The Complainant asserts that the Respondent’s motive is “commercial gain”, but does not explain how that gain is to be realized. The service offered on the Respondent’s website is the free provision of episodes of the Complainant’s television show and the Panel has been unable to locate any advertisements on the website.

Nonetheless, the Panel finds it improbable that there is no commercial benefit to the Respondent. Furthermore, the Panel notes that the Respondent’s website invites visitors to provide personal information to the Respondent. A section headed “REQUEST AN EPISODE / CONTACT US” reads: “Have a request, a question, a a comment? Want to collaborate in some way? Just have something nice to say? I’d love to hear from you! Shoot me a message below and I’ll be sure to get back to you as soon as I can. Thanks.” There then follows a form for the visitor to enter their name, email address etc. and a message. The section ends with an email address of someone who appears to be a “Dr Phil”.

The Panel is satisfied on the balance of probabilities that any personal information provided in response to that invitation would be used for a commercial purpose. Moreover, the Panel doubts that any visitor to that website would provide the personal information requested, if they knew that the website and its operator had nothing to do with the Dr. Phil of the television show. For this reason, the Panel also finds that the Respondent is likely to have registered the Domain Name for the purpose of phishing and to be using it for phishing.

The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 Domain Name, <drphil.club>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: September 28, 2020