Complainant is D LLC of Brentwood, Tennessee, United States of America (“United States”), represented by Furr Law Firm, United States.
Respondent is Domain Vault, Domain Vault LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2018. On August 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 27, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 28, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 2, 2018. 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 supplies stock photographs and offers a community-based website at its domain name under its DREAMSTIME mark. Complainant registered this domain name as early as June 11, 2000. Complainant owns valid and subsisting trademark registrations in the United States for the marks DREAMSTIME (Reg. No. 3,037,967) and DREAMSTIME & Design (Reg. No. 3,176,620), which issued January 3, 2006 and November 28, 2006, respectively, and allege June 11, 2000 as their dates of first use in commerce.
Respondent registered the disputed domain name on June 28, 2003. The disputed domain name resolves to a parked page containing sponsored links to third-party websites related to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns valid and enforceable rights in the DREAMSTIME trademark as used on or in connection with promoting the goods and services of others by providing a website in the field of royalty free images and stock photography. Complainant further contends that the DREAMSTIME trademark is world-famous. Complainant alleges that it acquired rights in the DREAMSTIME trademark before Respondent registered the disputed domain name. Complainant contends that Respondent’s use of the disputed domain name is likely to cause consumer confusion because the similarity of the disputed domain name to the DREAMSTIME trademark and its use on or in connection with related services. Specifically, Complainant claims that the disputed domain name wholly incorporates the DREAMSTIME trademark, but also omits the letter “s” from the DREAMSTIME trademark. Complainant asserts that Respondent intends to divert traffic from Complainant’s website, which intentionally passes off Respondent’s services as Complainant’s in a way that misappropriates and damages the goodwill in Complainant’s trademark.
Complainant asserts that it has not authorized Respondent to use Complainant’s trademarks in any way and that the parties have no connection or affiliation with one another. Complainant further asserts that Respondent is now known by the disputed domain name and has not made any bona fide use of the name. Complainant represents that it could not locate evidence of a person or entity using the name “Dreamtime;” Instead, Complainant claims that Respondent has only used the disputed domain name to display an index of targeted pay-per-click advertisements. Complainant argues that such use is not bona fide, but is intentionally infringing.
Complainant contends that Respondent registered the disputed domain name after Complainant acquired rights in the DREAMSTIME trademark and that it has used the mark on or in connection with links that purport to relate to services that Complainant offers, but instead redirect to pay-per-click advertising.
Complainant claims that Respondent registered the disputed domain name in bad faith because its DREAMSTIME trademark is so famous and internationally strong that it is impossible for Respondent to have been unaware of Complainant’s mark.
Complainant also claims that Respondent’s registration of the disputed domain name was in bad faith because it was made after Complainant acquired rights in the DREAMSTIME trademark. Complainant suggests that Respondent is using the disputed domain name to host malicious content. Specifically, Complainant alleges that “Norton stopped the browser from going to the [“”] website for security reasons,” likely referring to the brand of anti-virus software offered by Symantec.
Complainant argues that Respondent’s use of the disputed domain name for targeted pay-per-click advertisements while otherwise passively holding it is evidence that the disputed domain name was registered in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally considered to be sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence that it owns valid registrations of the DREAMSTIME & Design (Reg. No. 3,176,620) and DREAMSTIME (Reg. No. 3,037,967) marks in the United States and, therefore, it has offered sufficient proof that it owns the marks.
The first element of the Policy also requires that the complainant offer sufficient evidence that the disputed name is identical or confusingly similar to the complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. In this proceeding, the disputed domain name differs from the Complainant’s mark by its omission of the letter “S.” This omission does not change the number of syllables and the Complainant’s mark and the disputed domain name remain nearly identical sound. In addition, the omission of a single character does not have a significant effect on the appearance of the disputed domain name. The addition or subtraction of the letter “S” affects the meaning of the words by affecting the tense of the component “DREAM” from singular to plural, resulting in only a slight difference. See, e.g., Universal City Studios, Inc. v. HarperStephens,WIPO Case No. D2000-0716; Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone,WIPO Case No. D2004-0018.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the DREAMSTIME & Design marks and in showing that the disputed domain names are identical or confusingly similar to these marks. B. Rights or Legitimate Interests
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the DREAMSTIME mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to its own website, providing links to third-party websites from which Respondent ostensibly collects click-through fees.
In these circumstances, use of the disputed domain name to redirect Internet users to a website used to generate click-through fees from links to other third-party websites cannot confer any rights or legitimate interest in the disputed domain name to Respondent. See, e.g., Richemont International SA v. Turvill Consultants,WIPO Case No. D2014-0862 (“Respondent is using the disputed domain names as pay‑per‑click advertisement websites that include a search engine and advertise links to the products of Complainant’s competitors and/or counterfeit products, which is not a bona fide or legitimate use”).
Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interest in the disputed domain name. Thus, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Noting that Respondent lacks any rights or legitimate interests in the disputed domain name, use of the disputed domain name incorporating a nearly identical trademark by Respondent, who has not been authorized to redirect Internet users to a Respondent-owned website for commercial gain, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] redirecting the domain name to redirecting the domain name to a different respondent-owned website […]”). As noted by Complainant, the disputed domain name appears intentionally calculated to reference Complainant’s domain name (registered in 2000), further adding to the potential for confusion.
Respondent’s use of the disputed domain name to maintain a pay-per-click website displaying links related to Complainant and to generate click-through revenue suggests bad faith registration and use under Policy paragraph 4(b)(iv). See, e.g., Hardee’s Food Systems, Inc. v. Morgan Kelsey,WIPO Case No. D2011-1757.
In light of this activity, and given that Respondent registered the disputed domain name without Complainant’s authorization after Complainant’s rights in this mark had been established, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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.
Brian J. Winterfeldt
Sole Panelist
Date: October 16, 2018
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