WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Horizon Media, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Eddie Mayes
Case No. D2021-1072
1. The Parties
The Complainant is Horizon Media, Inc., United States of America (“United States” or “U.S.”), represented by Haug Partners LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Eddie Mayes, Canada.
2. The Domain Name and Registrar
The disputed domain name <horizonmediaagency.com> 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 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 12, 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 April 12, 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 April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2021.
The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on May 26, 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 holder of the following trademarks (collectively the “HORIZON trademarks”):
- HORIZON MEDIA (plus design), U.S. Reg. No. 3,691,388 International Class No. 35 Goods and Services: Advertising services for others, namely, acquiring advertising space and placement of advertisements;
- HORIZON BIG, U.S. Reg. No. 6,180,865 International Class No. 35 Goods and Services: Advertising services for others, namely, acquiring advertising space and placement of advertisements; advertising and business management consultancy; advertising and marketing consultancy; consultancy regarding advertising communications strategies;
- HORIZON NEXT, U.S. Reg. No. 5,325,844 International Class No. 35 Goods and Services: Advertising and business management consultancy; advertising and marketing consultancy; consultancy regarding advertising communications strategy; direct marketing advertising for others; direct marketing services.
The disputed domain name was registered on May 29, 2018. As provided in the Complaint, the disputed domain name resolves to a near-exact replica of a website operated by the Complainant.
5. Parties’ Contentions
The Complainant contends that:
- The disputed domain name incorporates the word element of Horizon Media’s federally registered service mark, under Registration No. 3,691,388, for the mark HORIZON MEDIA.
- The Respondent’s sole purpose for acquisition and making use of the disputed domain name is to confuse potential customers of Complainant into the mistaken belief that they are visiting a website which originates from Complainant. Accordingly, consumer confusion is inevitable.
- The use of the domain is confusingly similar to the HORIZON BIG and HORIZON NEXT service marks, which are also registered by the Complainant.
- The Complainant has been using its HORIZON MEDIA service mark since 2007.
- Between May 29, 2018 and April 6, 2021, the Respondent copied, in its entirety, the Complainant’s website and published the infringing content on the disputed domain name.
- The Respondent should be considered as having no rights or legitimate interests with respect to the domain name that is the subject of the Complaint because: there is no evidence of the Respondent’s use of the domain name or a name corresponding to the domain name in connection with a bona fide or legitimate offering of goods or services; the Respondent has never been commonly known by the domain name; and the Respondent is making an illegitimate use of the domain name to mislead and divert consumers who are attempting to find Complainant.
- The disputed domain name should be considered as having been registered and used in bad faith by the Respondent as it consists entirely of a near-exact replica of Complainant’s own website.
- The disputed domain name was registered or acquired for no purpose aside from confusing customers of the Complainant and/or selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (i.e., the Complainant) for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
Although procedurally summoned, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the HORIZON trademarks acquired through use and registration.
The disputed domain name is confusingly similar to the HORIZON trademark registrations of the Complainant, as it identically adopts the Complainant’s HORIZON MEDIA trademark and the verbal element “HORIZON” from the HORIZON NEXT and HORIZON BIG trademarks, in addition to the non-distinctive and descriptive word “agency”.
It is well accepted that the first element functions primarily as a standing requirement. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore, finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and the first element under of paragraph 4(a) of the Policy is therefore established.
B. Rights or Legitimate Interests
In order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes a prima facie showing, the burden of production shifts to the Respondent (see WIPO Overview 3.0, section 2.1).
In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.
Accordingly, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the dispute domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers, as the Respondent copied, in its entirety, the Complainant’s website.
In addition, considering that there is no evidence of the Respondent’s use of the disputed domain name or a name corresponding to the domain name in connection with a bona fide or legitimate offering of goods or services and the Respondent has never been commonly known by the disputed domain name, in the opinion of this Panel, the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.
C. Registered and Used in Bad Faith
This Panel considers the circumstances presented in the Complainant’s contentions as documented in the Complaint relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name.
Such circumstances refer to the following facts documented by the Complainant, as follows:
- reproducing the Complainant’s registered trademark HORIZON MEDIA in the disputed domain name with an additional descriptive term clearly indicates the Respondent knew of and targeted the Complainant’s trademark when registering the disputed domain name in bad faith. This suggestion is further supported by the Respondent’s replication of the Complainant’s website content as the content of the website to which the disputed domain resolves. (See WIPO Overview 3.0, section 3.2.1.).
- the Respondent’s use of the disputed domain name resolving to a website replicating the content of the Complainant’s website indicates that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered HORIZON MEDIA trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
- the fact that the Respondent is using a privacy protection service to hide its true identity may in itself constitute a factor indicating bad faith in the circumstances of this proceeding (see WIPO Overview 3.0, section 3.6 and the cases referenced therein).
Noting also that the contentions of the Complainant have not been rebutted by the Respondent, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is also established.
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 <horizonmediaagency.com> be transferred to the Complainant.
Dr. Beatrice Onica Jarka
Date: June 14, 2021