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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sight and Sound Ministries v. Shishir Ahmed

Case No. D2021-0737

1. The Parties

The Complainant is Sight and Sound Ministries, United States of America (“United States”), represented by Gibbel Kraybill & Hess LLP, United States.

The Respondent is Shishir Ahmed, Bangladesh.

2. The Domain Names and Registrar

The disputed domain names <jesuslive2021.com> and <sightsoundtv.com> are registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 17, 2021, 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 amendment to the Complaint on March 17, 2021.

The Center verified that the Complaint together with the amendment to 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 March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021.

The Center appointed Jane Seager as the sole panelist in this matter on May 4, 2021. 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 United States-based corporation engaged in the provision of theatrical services and public performances related to Christian religious stories in Lancaster, Pennsylvania, and Branson, Missouri, United States, as well as online.

The Complainant is the owner of the following trademarks:

- United States Trademark Registration No. 3859775, SIGHT & SOUND, registered on October 12, 2010;

- United States Trademark Registration No. 3859776, SIGHT & SOUND THEATRES, registered on October 12, 2010;

- United States Trademark Registration No. 5812449, SIGHT & SOUND THEATRES (stylized), registered on July 23, 2019;

- United States Trademark Registration No. 5812446, SIGHT & SOUND THEATRES (and design), registered on July 23, 2019.

The Complainant has also submitted trademark applications before the United States Trademark and Patent Office (“USPTO”), for registration of SIGHT & SOUND TV as a trademark.

Since January 19, 2021, the Complainant has promoted its production “Jesus – Live!”, an online streaming event of a live broadcast of the Complainant’s stage production “Jesus”. The Complainant has offered the production for viewing online via its websites at “www.sight-sound.com” and “www.sight-sound.tv”.

The disputed domain name <sightsoundtv.com> was registered on January 27, 2021. The disputed domain name <jesuslive2021.com> was registered on February 18, 2021.

The disputed domain name <sightsoundtv.com> resolves to a webpage (“www.sightsoundtv.com/register/”), which purports to offer one of the Complainant’s productions, “Queen Esther”, for viewing online. When attempting to access the broadcast, Internet users are requested to “create an account”. When attempting to do so, Internet users are redirected to a third-party website that requests the provision of personal and credit card information. The Complainant has received reports of fraudulent credit card charges by the operator of the website to which the disputed domain name <sightsoundtv.com> redirects.

The disputed domain name <jesuslive2021.com> does not, at the time of this decision, resolve to an active website. According to archived screen captures available at “www.archive.org”, on February 22, 2021, the disputed domain name <jesuslive2021.com> resolved to a website purporting to offer a live broadcast of the Complainant’s production “Jesus”.1

5. Parties’ Contentions

A. Complainant

The Complainant asserts registered rights in the trademarks SIGHT & SOUND, and SIGHT & SOUND THEATRES. The Complainant asserts common law trademark rights in JESUS – LIVE! and SIGHT & SOUND TV. The Complainant submits that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names. The Complainant submits that the Respondent is using the disputed domain names in order to mislead Internet users into believing that the websites to which the disputed domain names resolve are those of the Complainant, in an attempt to fraudulently obtain personal and credit card information.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant argues that the Respondent registered the disputed domain names for fraudulent purposes. The Complainant asserts that the Respondent has used the disputed domain names in connection with websites that misappropriate the Complainant’s works, and seek to obtain personal identifying information and funds from consumers intending to engage the Complainant’s services.

The Complainant requests transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademarks SIGHT & SOUND, and SIGHT & SOUND THEATRES, the registration details of which are provided in the factual background section above.

The disputed domain name <sightsoundtv.com> comprises the dominant elements of the Complainant’s SIGHT & SOUND trademark, in that the disputed domain name simply omits the spaces and the ampersand between the words “sight” and “sound”, and adds the term “tv” as a suffix. The Panel finds that the dominant elements of the Complainant’s SIGHT & SOUND trademark are clearly recognizable in the disputed domain name. The addition of the term “tv” does not prevent a finding of confusing similarity between the Complainant’s SIGHT & SOUND trademark and the disputed domain name <sightsoundtv.com>; see WIPO Overview 3.0, section 1.8. The Panel finds the disputed domain name <sightsoundtv.com> to be confusingly similar to the Complainant’s SIGHT & SOUND trademark.

In establishing unregistered trademark rights, the fact that a respondent is shown to have been targeting the complainant’s mark may support the complainant’s assertion that its mark has achieved significance as a source identifier; see WIPO Overview 3.0, section 1.3. The Panel notes in this regard that within a week of the Complainant’s online streaming of its production “Jesus – Live!”, the Respondent registered the disputed domain name <jesuslive2021.com>. The Panel infers that the Respondent did so in the belief that consumers would identify the Complainant as the source of origin of the disputed domain name. The Panel finds that the Complainant has provided evidence that “Jesus – Live!” has become a distinctive identifier which consumers associate with the Complainant’s online broadcasting services, so as to give rise to unregistered trademark rights for purposes of the Policy. The disputed domain name <jesuslive2021.com> comprises the terms “Jesus” and “live”, omitting the hyphen between the two words as well as the exclamation mark, and includes the element “2021”. Again, the Panel finds that the dominant elements of the Complainant’s mark are recognizable in the disputed domain name <jesuslive2021.com>, and further finds that the addition of the element “2021” does not prevent a finding of confusing similarity. The Panel finds the disputed domain name <jesuslive2021.com> to be confusingly similar to a trademark in which the Complainant has rights.

The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the disputed domain name <sightsoundtv.com> is being used in connection with a website which purports to offer one of the Complainant’s productions for viewing online. When attempting to access the broadcast, Internet users are redirected to a third-party website that requests the provision of personal and credit card information. The Complainant has received reports of fraudulent credit card charges by the operator of the website at the disputed domain name <sightsoundtv.com>. The Panel infers from historic screen captures of the content previously appearing at the disputed domain name <jesuslive2021.com>, that it was intended to be used for similar purposes.

The Panel finds that the Respondent has used the disputed domain names in an attempt to impersonate the Complainant, and to mislead unsuspecting Internet users into disclosing their personal and credit card details. Prior UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

The Respondent has not come forward to assert rights or legitimate interests in the disputed domain names, and there is no other evidence to suggest that any of the provisions of paragraph 4(c) of the Policy applies.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear, from the contents of the websites appearing at the disputed domain names, that the Respondent had knowledge of the Complainant, and registered the disputed domain names, having no authorization to make use of the Complainant’s trademarks as part of a domain name or otherwise, in an attempt to create a misleading impression of association with the Complainant, in bad faith.

The Panel accepts the Complainant’s assertion that the Respondent has made use of the disputed domain name <sightsoundtv.com> in an attempt to mislead unsuspecting Internet users into disclosing their personal and credit card information. In the absence of any Response, the Panel infers that the disputed domain name <jesuslive2021.com> was registered and was intended to be used for similar purposes. Prior UDRP panels have found that given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4. The Panel finds that the Respondent has used the disputed domain names in bad faith. The fact that the disputed domain name <jesuslive2021.com> no longer resolves to an active website does not otherwise prevent a finding of bad faith.

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 names <jesuslive2021.com> and <sightsoundtv.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: May 26, 2021

1 Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (“www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8.

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