The Complainant is D, LLC of Brentwood, Tennessee, United States of America (“United States” or “USA”), represented by Furr Law Firm, United States.
The Respondent is Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Chitre, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 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, the Complainant filed an amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 26, 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
The Complainant has operated a business providing stock photos and digital images via the Internet under the trademark DREAMSTIME since 2000, and it owns two USA Trademark Registrations for the DREAMSTIME trademark, as follows:
USA Registration No. 3,037,967 for DREAMSTIME (filed on November 9, 2004 and registered on January 3, 2006);
USA Registration No. 3,176,620 for DREAMSTIME logo (filed on November 7, 2005 and registered on November 28, 2006).
The Complainant has owned and used the domain name since it was registered on June 11, 2000 in association with its online business.
The disputed domain name was registered on October 17, 2005, and at the time the Complaint was filed, it was used in association with a website which featured pay-per-click links to third party websites. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name wholly incorporates the Complainant’s registered trademark for DREAMSTIME, except for replacing the letter “m” with the letter “n”, thereby miss-spelling the registered trademark in order to attract unsuspecting Internet users. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent is not known by the name “Dreamstine”, and has not been authorized by the Complainant to use the trademark DREAMSTIME. The Respondent has not used the disputed domain name in association with a bona fide offering of goods and services. The disputed domain name reverts to a pay-per-click website that provides links to third party websites which offer competing services. The Complainant submits that the Respondent has registered a confusingly similar domain name to trade on the goodwill and reputation of the Complainant, which is not evidence of a legitimate right or interest.
The Complainant further submits that the Respondent has registered and used the disputed domain name in bad faith. The Respondent must have been aware of the Complainant and the Complainant’s trademark rights in the DREAMSTIME mark when it registered the disputed domain name. The Respondent has not used the disputed domain name in association with a bona fide offering of goods and services, but has passively held the name and used the disputed domain name in association with a pay-per-click website featuring links to competitors of the Complainant. The Respondent by registering and using this confusingly similar domain name has interfered with the Complainant’s business, by directing Internet users seeking the Complainant to the Respondent’s website for monetary gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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 Panel finds that the Complainant does have recognizable trademark rights in the trademark DREAMSTIME by virtue of its trademark registrations listed in paragraph 4 of this Decision. The DREAMSTIME element itself is a prominent feature in both of the noted registrations.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark DREAMSTIME, as the disputed domain name replicates the dominant element of the Complainant’s registered trademark. The replacement of letter “m” with the letter “n” is an obvious example of typosquatting.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests.
The Complainant owns rights in the registered mark DREAMSTIME as noted in paragraph 4 of this Decision. It is relevant that the Complainant filed for the word mark DREAMSTIME in the United States Patent and Trademark Office (“USPTO”) on November 9, 2004. Thereafter, the Respondent registered the disputed domain name on October 17, 2005. The Panel also notes that the Complainant registered its domain name on June 11, 2000. This chronology suggests that the Respondent was likely aware of the Complainant or had seen the recent filing in the USPTO and discovered the Complainant’s application. The Respondent was also likely aware of the Complainant’s domain name.
On its own the chronology is not necessarily conclusive, but when combined with the lack of bona fide use of the disputed domain name by the Respondent, namely the use of a click-through site linked to competitors in the field of digital images, it is sufficient to support a prima facie case.
In this situation, the burden of production then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the Panel is prepared to find that the Respondent was likely aware of the Complainant and Complainant’s trademark rights in the DREAMSTIME mark when it registered the disputed domain name . This conclusion is supported by the fact that the Respondent is using the disputed domain name in association with a website that provides links to third party websites which are in direct competition to the Complainant’s for purposes of monetary gain. This conduct reflects an intention to interfere with the Complainant’s business in a manner which is abusive under the Policy. The Respondent has failed to provide any evidence to explain its conduct.
The Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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 the Complainant.
Christopher J. Pibus
Sole Panelist
Date: October 4, 2018
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