WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ugly, Inc. v. Sivachuck Stanislav
Case No. D2021-1027
1. The Parties
The Complainant is Ugly, Inc., United States of America (“United States”), represented by Pryor Cashman, LLP, United States.
The Respondent is Sivachuck Stanislav, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <coyoteugly.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2021, 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 April 7, 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 the same day.
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 April 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on May 10, 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 the owner and licensee of the “Coyote Ugly Saloon” bars. The first of its western-themed saloon bars was opened in 1993 and the Complainant’s bars now operate from many locations, both in the United States and in other countries.
The Complainant owns trade marks for COYOTE UGLY in over 50 jurisdictions. These include, by way of example only, United States service mark for COYOTE UGLY, registration number 2,144,582 in Class 42, registered on March 17, 1998. The Complainant also owns and operates a website, using the domain name <coyoteuglysaloon.com>, which offers COYOTE UGLY-branded merchandise for sale as well as information about its bars, including franchising opportunities.
The disputed domain name was registered on January 13, 2020. It resolves to a website containing explicit content, including pornography.
5. Parties’ Contentions
The Complainant refers to its many trade and service marks for COYOTE UGLY and says that the disputed domain name is identical to trade marks and service marks in which it has rights. It has spent substantial time and resources promoting and marketing its goods and services under the COYOTE UGLY marks. The disputed domain name is identical to those marks, with the only difference between them being the generic Top-Level Domain (“gTLD”) “.net” component of the disputed domain name. This does not distinguish the disputed domain name from the Complainant’s mark as the gTLD is disregarded for the purpose of the comparison.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s use of its COYOTE UGLY marks, which commenced in 1993, significantly predates the Respondent’s registration of the disputed domain name in January 2020. The Respondent has never been an authorized representative or agent of the Complainant, nor does it have any other business relationship with it. The Complainant has not licensed or otherwise permitted the Respondent to use its mark, nor is there any evidence suggesting that the Respondent is commonly known by the disputed domain name.
Lastly, the Complainant says that the Respondent registered and is using the disputed domain name in bad faith. The Respondent is well aware of the valuable goodwill and reputation represented and symbolized by the Complainant’s COYOTE UGLY marks. Despite this, the Respondent registered the disputed domain name years after the Complainant’s mark became well-known. By using the disputed domain name in connection with a website which provides explicit content, including pornography, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s COYOTE UGLY marks, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or the Respondent’s goods and services.
The Respondent’s conduct constitutes “porno-squatting” which arises when a cyber-squatter tries to take advantage of a well-known trade mark in order to attract Internet users to a pornographic website. The Respondent is using the disputed domain name as a means to mislead and attract Internet users to a website promoting the Respondent’s pornographic content, which will likely tarnish the Complainant’s reputation. In the absence of evidence to the contrary, linking a domain name to a pornographic website is prima facie evidence of bad faith; see Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. Accordingly, the Respondent’s actions in registering and using the disputed domain name are intentional, willful and committed with full knowledge that it was using the Complainant’s COYOTE UGLY trade marks for commercial gain. Further indications of bad faith are evident from the Respondent’s failure to respond to the Complainant’s cease and desist letter and its use of a WhoIs privacy shield in an attempt to conceal its true identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of the registered marks it owns for COYOTE UGLY, including the service mark in respect of which full details have been given above, and has thereby established its rights in this mark.
As a technical requirement of registration, the gTLD that is “.net” in the case of the disputed domain name, is typically disregarded when applying the test for identicality or confusing similarity under the first element.
The disputed domain name therefore comprises the Complainant’s COYOTE UGLY mark, in full and without any alteration. It is accordingly identical to the Complainant’s COYOTE UGLY service mark.
The Panel therefore finds that the disputed domain name is identical to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Having regard to the repute and distinctive character of the Complainant’s brand coupled with the identicality between the disputed domain name and the Complainant’s mark, the disputed domain name has evidently been chosen by the Respondent in order to attract visitors to its website who are likely to have been searching for the Complainant’s website. Irrespective almost of the specific content of the website to which the disputed name resolves, such use does not comprise a bona fide offering of goods and services although the nature of the Respondent’s website may be regarded as an exacerbating factor; see, for example, Agfa-Gevaert N.V. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) / Leng Da Ge, WIPO Case No. D2020-2637.
The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable as the Respondent’s website is commercial in character. Moreover, the composition of the disputed domain name is such that it carries a high risk of implied affiliation with the Complainant, which prevents its use from being considered fair; see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings, WIPO Case No. D2016-2290.
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does; see section 2.1 of the WIPO Overview 3.0. The Respondent having failed to respond to the Complaint, has self-evidently not satisfied that burden. Even so, noting the composition of the (identical) domain name and the posted content, the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As at the date of registration of the disputed domain name in January 2020, the Complainant’s business had been established for over 25 years. The identicality between the disputed domain name and the Complainant’s distinctive COYOTE UGLY mark, provides a strong indication that Respondent was aware of the Complainant and its mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith.” The Panel similarly finds the Respondent’s registration of the disputed domain name to have been in bad faith.
Paragraph 4(b) of the Policy sets out, without limitation, 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 circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within the circumstance described at paragraph 4(b)(iv) in that the Respondent is using the fame of the Complainant’s mark in order to attract Internet users to its website who are likely to assume that from the identicality between the disputed domain name and the Complainant’s COYOTE UGLY mark, that the disputed domain name is connected with the Complainant and its services. The fact that such users would realize on reaching the Respondent’s website that this is not the case is immaterial because the Respondent will have achieved its objective of luring them to its website in order, it is assumed, to earn advertising or other revenue from such visits. See for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491.
There is effectively no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise. These factors collectively point to bad faith registration and use of the disputed domain name and the fact that the Respondent’s website displays explicit content, further confirms the Respondent’s bad faith. See, by way of example, Merck Sharp & Dohme Corp. v. ZhenHui, HuiZhen, WIPO Case No. D2016-1431 and Six Continents Hotels, Inc. v. Seweryn Nowak (supra).
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
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 <coyoteugly.net> be transferred to the Complainant.
Date: May 26, 2021