WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Anastasia International, Inc. v. Whois Privacy Protection Service, Inc. / Jim McDonald Case No. D2010-0235 1. The Parties
The Complainant is Anastasia International, Inc. of Lexington, Kentucky, United States of America, represented by Bowles Rice McDavid Graff & Love LLP, United States of America.
The Respondent is Whois Privacy Protection Service, Inc. / Jim McDonald of Marina Del Rey, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 17, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On February 18, 2010, eNom 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 February 22, 2010 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 February 27, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2010. The Respondent did not submit any formal response, however, prior to the commencement of the proceedings, the Center received an email communication from the Respondent's email address from an individual who claimed ownership of the domain name registration on February 23, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 6, 2010. 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 well-established company that has operated in the United States of America to introduce and conduct romance tours between American men and Russian women since 1995. The Complainant has registered valid service marks with the United States Patent and Trademark Office (“USPTO”) for the marks, ANASTASIA (Registration No. 2083092; issued July 29, 1997) and ANASTASIAWEB (Registration No. 2936266; issued March 29, 2005).
The Respondent owns the registration for the disputed domain names, , , and . The first domain name above was registered on March 8, 2009, and the latter two domain names on March 20, 2009. At the time of filing of the Complaint, the disputed domain names did not resolve to an active website. 5. Parties' Contentions A. Complainant
- The Complainant started business operations in 1995 and is now one of the largest Russian-American introduction and romance tour companies in the world. It markets an online service whereby American clients can establish relationships with and meet Russian women. The Complainant has crafted a recognized reputation for honesty and integrity. Its services have been advertised over many television networks on a worldwide basis, and its romance tours are world famous.
- The Complainant owns USPTO service mark registrations for ANASTASIA and ANASTASIAWEB. It also owns and conducts business through several domain names, , , and .
- All of the disputed domain names, , , and , are either identical or confusingly similar to the Complainant's service marks. Addition of the negative word “scam” to the marks is not significant because the word is not the most prominent or obvious feature of any of the disputed domain names.
- The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has failed to establish that the Respondent's use is: legitimate or noncommercial fair use; without intent for commercial gain; without intent to misleadingly divert consumers; and without intent to tarnish the service mark of the Complainant.
- The Complainant has never authorized the Respondent to use the Complainant's marks in domain names. Neither the Respondent nor a company owned by the Respondent has been commonly known by the disputed domain names. As of the time of filing, the domain names are not being used for any purpose.
- The disputed domain names were registered and are being used in bad faith. The domain names were registered to unfairly disrupt the Complainant's business and are a clear attempt to misleadingly divert the Complainant's prospective clients to the Respondent's websites. Moreover, there is evidence that the Respondent has registered the disputed domain names in a manner that is misleading as to the Respondent's true identity. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. However, prior to the commencement of the proceedings, the Center received an email communication from the Respondent's email address from an individual who claimed ownership of the domain name registration and indicated that he “ha[s] no need, use or desire” for the disputed domain names and would “hand them over if needed”. The individual additionally indicated that he was “not disputing anything” and “did not realize that [his actions] would be considered cyber-squatting” and that “when [he] was informed of this, [he] removed the sites from the web.” 6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) – (iii), the Panel may order the transfer of the disputed domain names, , , and , if the Complainant can prove that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names have been registered and are being used in bad faith.
As the Respondent failed to submit a Response in these proceedings, the Panel shall regard as true all of the Complainant's reasonable contentions and draw such inferences from those contentions as are appropriate. See, Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. 839408 (“In view of Respondent's failure to submit a response, the Panel…is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”); and MC Enterprises v. Mark Segal (N),WIPO Case No. D2005-1270 (“Although a respondent is not obliged to participate in a domain name dispute, if it were to fail to do so, it would be vulnerable to the inferences that flow naturally from a complainant's not unreasonable assertions of fact.”). A. Identical or Confusingly Similar
The Complainant has submitted to the Panel appropriate evidence (Annex C) of the Complainant's valid USPTO service mark registrations for ANASTASIA and ANASTASIAWEB, and thus the Panel concludes that the Complainant has rights in those marks sufficient to satisfy the requirements of Policy paragraph 4(a)(i). See, Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261 (“The Complainant has established rights in the ALADDIN…marks, which are registered with the United States Patent and Trademark Office and thus are entitled to a presumption of validity.”); and Microsoft Corporation v. Stephan Burkes d/b/a MicrosoftZone.Com, NAF Claim No. 652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The Panel notes that none of the disputed domain names are identical to either of the Complainant's service marks, even when taking into account the inconsequential inclusion of the gTLD “.com”. In all of the domain names, the word “scam” has been added. In one disputed domain name, the word “international” has also been added, and all three domain names include at least one hyphen.
However, in the Panel's view, none of these alterations create a material distinction from either of the Complainant's duly registered marks. In each case, the dominant term is “Anastasia”, a fanciful and distinctive word. Moreover, the word “international” fails to distinguish the disputed domain name that employs it from the Complainant's mark and business, because “International” is part of the Complainant's full business name. Furthermore, use of the word “scam” is merely a derogatory comment, apparently directed at the Complainant's operations, which does not mitigate the overall confusing nature of the disputed domain names with respect to the Complainant's marks – particularly to non-English speaking Internet users who may not recognize “scam” as a negative term. Finally, the hyphens do not serve as materially distinguishing features. For supporting prior UDRP decisions, see, Société Air France v. Mark Allaye-Chan,WIPO Case No. D2009-0327 (where the panel found that the domain name, , was confusingly similar to the trademark, AIR FRANCE); Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647 (in finding confusingly similar to SERMO, the learned panel stated: “The addition of other terms in the domain name, even derogatory ones, does not affect a finding that the domain name is identical or confusingly similar to the complainant's trademark for purposes of the Policy.”); and Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,WIPO Case No. D2009-1416 (“…In comparing this mark to the disputed domain name, the Panel has disregarded…the hyphen in the disputed domain name…”). As a result, the Panel determines that all three of the disputed domain names are confusingly similar to the Complainant's valid service marks.
Per the above, the Panel finds that the Complainant has satisfied its burden with respect to Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant contends that it did not authorize use of its service marks by the Respondent with respect to domain name registration. Furthermore, those service marks have been found by the Panel to be confusingly similar to the disputed domain names. Given those circumstances, the Complainant has put forth a prima facie case that the Respondent lacks rights or legitimate interests in those names. Thus, the burden has been shifted to the Respondent to present clear evidence that it possesses such rights or interests. See Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228; and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (“Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy [paragraph] 4(a)(ii).”).
Failing to file a Response, the Respondent offers no credible rebuttal to the prima facie case so offered. Moreover, based on the record in these proceedings, the Panel fails to discern how the legitimizing criteria listed in Policy paragraph 4(c) might be invoked otherwise in the Respondent's favor. Specifically, the Panel finds no evidence that the Respondent – either Jim McDonald or Whois Privacy Protection Service, Inc. – has ever been commonly known by any variation or combination of any of the disputed domain names. Additionally, since the record reveals no use of the domain names, the Panel finds no reason to suspect that they have been utilized in connection with either a “bona fide offering of goods or services” or in a “noncommercial or fair use” manner. Ergo, the Panel concludes that the Complainant's prima facie case must prevail.
Per the above, the Panel finds that the Complainant has satisfied its burden with respect to Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Having proven the first two elements above, the Complainant must now satisfy the Panel that the disputed domain names were registered and are being used in bad faith.
In the view of the Panel, the Complainant's service marks are not so well-known – as, say, SONY, EXXON or FIAT – that the Panel can infer, a priori, that the Respondent registered the domain names in bad faith. However, among the Complainant's reasonable contentions is that the Respondent sought to disguise its identity in registering the disputed domain names. This sort of deception, along with a respondent's failure to file a response, have been pertinent circumstances involved when prior Policy panels found disputed domain names to be registered in bad faith. See, for example, Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel concludes that such evidence is sufficient in this case to sustain a finding that the disputed domain names were registered in bad faith.
As to the disputed domain names being used in bad faith, the Panel notes that, as contended by the Complainant, the domain names are not being used at all. Thus, the Panel must ask itself whether “usage in bad faith” requires some sort of “usage”? Whether, in effect, such nonuse can be employed as a shield to prevent a finding in favor of the Complainant regarding this Policy requirement even when bad faith registration has been firmly established? However, in consulting prior UDRP decisions, the Panel concludes that, when faced with similar circumstances, previous UDRP panels have ruled consistently that passive holding of domain names can constitute bad faith use per Policy paragraph 4(a)(iii). See, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (“The Respondent has not developed the website located at the domain name in question. Passive holding of a domain name is evidence of bad faith.”); Ladbroke, supra; and Telstra, supra. The Panel is inclined to follow such reasoning in determining that the disputed domain names in this case are indeed being used in bad faith.
Per the above, the Panel finds that the Complainant has satisfied its burden with respect to Policy paragraph 4(a)(iii). 7. Decision
For all 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, , , and , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: April 20, 2010
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