Complainant is Iflscience Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Sipara, United Kingdom.
Respondent is Domains By Proxy LLC of Scottsdale, Arizona, United States of America / Dr Chauncey Siemens of Rochester, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2016, 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 Complainant on May 6, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on May 10, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 Respondent of the Complaint, and the proceedings commenced on May 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 9, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 23, 2016. 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
Complainant, Iflscience Limited, operates a website and social media pages including articles and video's on the funny side of science.
Complainant is the holder of the following registered trademarks:
- IFLSCIENCE, word mark, registered with the United Kingdom Intellectual Property Office under No. UK00003138547 on April 8, 2016 in classes 3, 9, 14, 16, 18, 24, 25, 28, 35 and 41;
figurative mark, registered with the UK IPO under UK00003138552 on April 8, 2016 in classes 3, 9, 14, 16, 18, 24, 25, 28, 35 and 41;
The Disputed Domain Name was registered on February 3, 2015, and has been used to redirect to a website similar to Complainant's website. The Panel notes that the Disputed Domain Name now refers to an error page. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are registered IFLSCIENCE trademarks in which Complainant has rights. Before the registration of these trademarks, the Panel finds that Complainant already had unregistered rights in the signs, as Complainant successfully showed that these have become a distinctive identifier associated with Complainant and its services since 2012.
The Panel notes that the Disputed Domain Name incorporates Complainant's IFLSCIENCE trademark in its entirety. The Panel is of the opinion that the addition of the generic Top-Level Domain ".org" can be generally disregarded when comparing the similarities between a domain name and a trade mark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to Complainant's IFLSCIENCE trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established in prior decisions under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" (Policy, paragraph 4(c)(iii)). Respondent has been using the Disputed Domain Name to refer to a website which was almost identical to the (look and feel of) Complainant's website. Moreover, Respondent incorporated the exact figurative trademark of Complainant on its website.
In the Panel's view, the website linked to the Disputed Domain Name could not be considered as a parody of the Complainant's website. On this point, the Panel refers to the case A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen,WIPO Case No. D2001-0900, where the panel held that the disputed domain name itself must convey two simultaneous – and contradictory – messages: that it is the original and at the same time that it is a parody of the original. Moreover, parodying another's mark to promote goods or services other than the parody itself weighs heavily against a respondent.
Given that the Disputed Domain Name is identical to Complainant's IFLSCIENCE trademark, the Panel finds that the Disputed Domain Name only conveys the first message, and thus that it cannot constitute a parody. Moreover, the Panel notes that the website linked to the Disputed Domain Name included sponsored links. In view of the foregoing, the Panel finds that such use of the Disputed Domain Name is detrimental to the Complainant and cannot be considered to constitute a bona fide commercial or fair use (see paragraph 2.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Finally, Respondent did not reply to Complainant's arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the Disputed Domain Name.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a nonexclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.
The Panel notes that the Disputed Domain Name was registered on February 3, 2015, before Complainant's trademarks. However, Complainant provides significant evidence regarding the use of the sign IFLSCIENCE and logo as unregistered trademarks long before the registration of the Disputed Domain Name. Complainant demonstrates the popularity of its website linked to the domain name and of its social media outlets. Moreover, the WhoIs records of Complainant's domain name , referring to Complainant's official website, show that this domain name has been registered and used since September 18, 2012. The Panel considers this as evidence of the prominent use of the "IFLSCIENCE" sign by Complainant before the registration of the Disputed Domain Name. Therefore, the Panel finds that Respondent must have had knowledge of Complainant and its rights at the moment it registered the Disputed Domain Name, which suggests bad faith (see Al Ghurair Group LLC v. Ghurair Group,WIPO Case No. D2004-0532; Rock im Park GmbH v. Rock Im Park Festival Wien / Klaus Schmidt,WIPO Case No. D2012-0956, where it was held that respondent was aware, or should have been aware, of complainant's unregistered trademark rights when it registered the disputed domain name, because complainant's "official" website was in operation well before the registration date of the disputed domain name. The disputed domain name was also almost identical to complainant's domain name referring to its "official" website. Finally, complainant's "official" website and unregistered mark would have been identified by a routine Internet search).
As mentioned above, Respondent used the Disputed Domain Name to refer to a website which was almost identical to Complainant's website. Moreover, Respondent incorporated the exact figurative trademark of the Complainant on its website, and added pay-per-click links. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is identical to a trademark to obtain click-through-revenue can amount to bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623).
Complainant also provides concrete unrebutted evidence of confusion amongst consumers who thought that the Disputed Domain Name related to Complainant's website. The Panel therefore concludes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. In accordance with 4(b)(iv) of the Policy, this is evidence of bad faith.
Finally, by failing to respond to the complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in 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 name be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: July 7, 2016
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