Complainant is Entertainment Earth, Inc., United States of America (“United States”), represented by Ferguson, Case, Orr, Paterson (LLP), United States.
Respondent is Domains By Proxy, LLC, United States / Colin Avraam, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2020. On February 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 2020. 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 February 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The proceeding was suspended on February 20, 2020, after receiving informal emails from Respondent on February 12 and February 19, 2020. The proceeding was reinstituted on March 26, 2020. Accordingly, the Center notified the Parties of the commencement of Panel Appointment on April 15, 2020 The Center appointed Marina Perraki as the sole panelist in this matter on April 20, 2020. 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 is an online retailer and wholesaler in the field of toys and collectibles. Complainant is the owner of the United States Trademark Registration No. 2,769,256 for ENTERTAINMENT EARTH (word) registered on September 30, 2003, for services in international class 35. The Domain Name was registered on September 26, 2019. Per Complaint, the Domain Name was used to redirect to Complainant’s website at “www.entertainmentearth.com”, in the context of, per Complainant’s information and belief, a fraudulent scheme involving a supposed online streaming service provided by an entity under the name IPTV, for which customers paid but were not provided with. Per Complainant, the Domain Name was also used to create an email address, namely “sales@entertainmentearth.shop” that was used in the context of the above scheme to communicate with the defrauded customers. The Domain Name currently resolves to a Pay Per Click (“PPC”) page. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration of the ENTERTAINMENT EARTH mark. The Panel finds that the Domain Name is practically identical with the ENTERTAINMENT EARTH trademark of Complainant, as it incorporates the said trademark of Complainant in its entirety. The generic Top-Level Domain (“gTLD”) “.shop” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (See Credit Agricole S.A. v. Yang Xiao Yuan,WIPO Case No. D2018-1476; Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) Respondent is 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any preparations to use, or any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrates, the Domain Name was used to redirect frustrated customers in the context of a, per Complainant’s information and belief, fraudulent scheme, to Complainant’s website at “www.entertainmentearth.com” and to create an email address, that was used in the context of such scheme to communicate with the customers. Such use demonstrates neither a bona fide offering of services nor a legitimate interest of Respondent (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 2.5.3 and 2.13). Currently the Domain Name resolves to a PPC parking page. Use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (WIPO Overview 3.0, section 2.9). The Panel also notes that in the informal communications of Respondent, the latter did not deny the above Complainant’s contentions and offered to transfer the Domain Name to Complainant. Lastly, the Domain Name includes the trademark of Complainant ENTERTAINMENT EARTH entirely, with the addition of the gTLD “.shop”. The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant provides its services online at “www.entertainmentearth.com”. Furthermore ENTERTAINMENT EARTH is a fictitious word combination. Because the ENTERTAINMENT EARTH mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754). Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, as online retailer at “www.entertainmentearth.com“ (See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Furthermore, the Domain Name is practically identical to Complainant’s trademark. This indicates that Respondent knew of Complainant and chose the Domain Name with such knowledge. It alsofurther supports registration in bad faith reinforcing the likelihood of confusion (See WIPO Overview 3.0, section 3.1.4). As regards bad faith use, per Complainant, the Domain Name redirected frustrated customers to Complainant’ s website at “www.entertainmentearth.com” and was used to create an email address in the context of a fraudulent, per Complainant’s information and belief, scheme resulting to consumers contacting Complainant believing it was the Respondent. Per Complainant’s information and belief, such scheme purported to elicit payment from customers for a television streaming service that did not exist. As part of the scheme, the Domain Name was used to send emails to defrauded customers involving the provision of a streaming service by an entity under the name IPTV and direct them to Complainant’s website once they realized that the streaming service they paid for did not exist. In addition to redirecting frustrated customers to Complainant’s website, as part of this scheme, the trademark of Complainant was allegedly used on purchase receipts, credit card receipts and bank statements in the same context. As follows from the above, the Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement. This supports the finding of bad faith use (WIPO Overview 3.0, sections 3.1.4 and 3.2.1). Furthermore, using a domain name to tarnish a complainant’s mark may constitute evidence of a respondent’s bad faith (WIPO Overview 3.0, section 3.12), whereas use of a domain name for sending deceptive emails, phishing, identity theft, or malware distribution may also constitute bad faith (WIPO Overview 3.0, section 3.4). The Domain Name currently leads to a parking page comprising PPC links. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). Under these circumstances and on this record, the Panel finds that the Domain Name has been registered and is being used in bad faith. Complainant has established Policy, paragraph 4(a)(iii). 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 Domain Name Marina Perraki
Sole Panelist
Date: May 4, 2020
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