The Complainant is James Patrick Duffy, United States of America (“United States”), represented by Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., United States.
The Respondent is Nie Nie, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2021, 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 the Complainant on March 17, 2021 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 amendment to the Complaint on March 17, 2021. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 4, 2021. 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 professional author who writes science-fiction under the pseudonym J. Patrick Black. The Complainant sold his first book in 2015, and his novel, Ninth City Burning, was published in 2016 by Penguin Random House. Both an English and German language version of this book are widely available for sale at booksellers including major online retailers. The Complainant is currently working on a sequel to this title. The Complainant states that he registered the disputed domain name and used this for a website concerning his publishing and personal profile. The Complainant adds that he inadvertently let the disputed domain name lapse in about October 2020 and it did not renew. The Complainant indicates that the Respondent then purchased the disputed domain name. These submissions are borne out by limited factual research into the historic WhoIs available at “www.domaintools.com” which the Panel has conducted in exercise of its general powers in terms of paragraph 10 of the Rules. The earliest available historic WhoIs entry, dating from the disputed domain name’s creation date of September 28, 2015 itself, shows the registrant of the disputed domain name as “James Duffy” with an address in Massachusetts, United States, i.e. the Complainant. This registrant appears to continue in possession of the disputed domain name until a final entry of April 4, 2020, after which the registrant details are redacted. On November 5, 2020, the registrar of the disputed domain name changed to the Registrar and, although most of the registrant data is obscured, the “Registrant State/Province” field is listed as “Sumatera Utara” which strongly suggests that the disputed domain name was transferred to or registered by the Respondent on or about this date, albeit retaining its original creation date. According to the Complainant, the website associated with the disputed domain name features a discussion and ranking of online roulette games, with links appearing throughout, and with a “comments” box, which collects personal information. Also according to the Complainant, said website is in the Malay language, which is spoken in Brunei, Indonesia, Malaysia, East Timor, Singapore, parts of Thailand and southern Philippines. The Complainant adds that this site has nothing to do with the Complainant, his works or his business. The Panel visited the website associated with the disputed domain name (given that the content was discussed extensively and relied upon in the Complaint) and found this to match the description contained in the Complainant’s submissions. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The Complainant asserts that he has a common law trademark in his pseudonym, “J. Patrick Black,” which he has been actively using since 2015 in connection with his goods and services, including the sale of his books. Said pseudonym has gained considerable notoriety. The lack of a trademark registration does not preclude a finding in the Complainant’s favor if his name has been used in a trademark sense in connection with goods or services. The disputed domain name incorporates entirely said common law trademark. A domain name can be confusingly similar for purposes of the first factor of the Policy if it incorporates a known pseudonym in its entirety because the pseudonym and the domain name, when directly compared, are confusingly similar. Rights and legitimate interests The Respondent has no legitimate use for a website at the disputed domain name. The Respondent took over the disputed domain name in a bad faith attempt to capitalize on the Complainant’s credibility and notoriety, so as to convince its users to purchase its services or to provide it with their private, personal, confidential, or financial information. The Respondent has never been a representative of the Complainant or licensed to use the “J. Patrick Black” name. The Respondent is not commonly known by this name. The Respondent has taken over the disputed domain name in order to divert traffic from the Complainant’s business to its own business. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. The Respondent is using the disputed domain name for an improper purpose. The Respondent was on notice of the Complainant’s exclusive rights in his pseudonym and corresponding domain name as a result of the Complainant’s notoriety as a well-respected published author. The Complainant’s name is a well-known business name and is easily found online. It is inconceivable that the existence of such a prominent writer was not present in the mind of the Respondent when it chose the disputed domain name. The only inference is that the Respondent knew perfectly well that it would create confusion, or was willfully blind to this fact. Registered and used in bad faith Although the Respondent was likely to be aware of the Complainant’s rights, the Respondent still took over ownership of the disputed domain name. The disputed domain name was purchased for the illegitimate purpose of intending to attract for financial gain Internet users to the Respondent’s business, which creates a likelihood of confusion. The Respondent has intentionally and wrongfully repurposed a well-recognized domain name as its own, so as to divert traffic and confuse consumers, actions which were committed with disregard of the Complainant’s ownership, rights, and reputation. The public will be misled as to the origin, sponsorship, or association of the information or services promoted, offered, or sold on the Respondent's website. The disputed domain name may also prevent or hinder Internet users from accessing the Complainant’s services by confusing and/or frustrating prospective users. Internet users may mistakenly believe that the services advertised and promoted at the Respondent’s website are those provided by the Complainant. Alternatively, once confused or frustrated, Internet users may stop searching for Complainant’s website and information altogether. The Respondent’s deceptive use of the Complainant’s former domain name anticipates, relies on, and profits from consumer confusion and mistake. Users of the Internet have been deprived of an easily accessible and valuable source of information about the Complainant’s activities and services. The Respondent’s website discusses users’ “privacy” and there is a risk that the Complainant’s actual or prospective clients may be deceived into providing personal data, believing that they are communicating with the Complainant. Such data may be exposed or stolen as a result of the Respondent’s bad faith actions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. A. Identical or Confusingly Similar The first element under the Policy functions essentially as a standing requirement and contains a two-part test. First, the Complainant must show UDRP-relevant rights in a trademark. Secondly, the disputed domain name is compared with such trademark to determine identity or similarity (usually disregarding the generic Top-Level Domain (“gTLD”) as required for technical reasons only). Generally speaking, if the Complainant’s trademark is recognizable within the disputed domain name, confusing similarity may be found. A trademark need not be registered in any particular territory in order to satisfy the first part of the test. However, if unregistered trademark rights are claimed, the Complainant must show, with relevant evidence, that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. In the present case, the Complainant claims unregistered trademark rights in the mark J. PATRICK BLACK. The Complainant’s evidence consists of examples of the presence of his books, written under the J. PATRICK BLACK pseudonym, on the websites of several major retailers. Said books have publication dates going back to September 2016 and around 100 customer reviews. It is clear that the Complainant’s novel, Ninth City Burning, is available both in English and in a German translation. It has been published by a well-known publisher. While the Panel would have liked to see more evidence, such as the extent to which the publications have been promoted or advertised, along with relative sales figures, it is prepared to find on the basis of the evidence before it that the Complainant has UDRP-relevant rights in the unregistered mark J. PATRICK BLACK. Said mark appears on the face of such evidence as has been provided to be a distinctive identifier in respect of the Complainant’s science-fiction books. Furthermore, the Respondent has not challenged any of the Complainant’s assertions or evidence on this topic. Comparing the J. PATRICK BLACK mark to the second level of the disputed domain name, it may be seen that barring the punctuation and spacing, which may not be reproduced in a domain name for technical reasons, the two are alphanumerically identical. This is not entirely surprising, given that it is the Complainant’s case that the Complainant itself originally registered the disputed domain name in order to promote the Complainant’s works. On the basis of this comparison, the disputed domain name is confusingly similar to the Complainant’s trademark. In all of these circumstances, the Panel finds the first element under the Policy to be established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (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) you are 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 Complainant contends that the Respondent is using the disputed domain name for an improper purpose, namely to convince Internet users to purchase the Respondent’s services or to provide it with their private, personal, confidential, or financial information in a bad faith attempt to capitalize on the Complainant’s credibility and notoriety. The Complainant adds that the Respondent is not a representative of the Complainant or licensed to use its J. PATRICK BLACK mark, nor is it commonly known by such name. The Complainant also notes that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Based on these contentions, which are not contradicted by anything on the present record, the Panel considers that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. In these circumstances, the burden of production shifts to the Respondent to demonstrate such rights or legitimate interests (on this topic, see for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624). The Respondent has not produced any submissions or evidence which would establish rights or legitimate interests in the disputed domain name. For example, the Respondent has not put forward any argument or evidence that its personal name is “J. Patrick Black” and, in any event, the registrant of record for the disputed domain name uses a different personal name. Furthermore, the use to which the disputed domain name has been put is in the nature of a commercial website, which appears to be designed to direct Internet users to various gambling websites and/or to obtain personal information from them. There is no logical link between this website and the name “J. Patrick Black” other than the Complainant’s explanation, which the Panel finds to be reasonable, that the disputed domain name was registered by the Respondent upon the Complainant’s failure to renew it, largely for the benefit of the Internet traffic generated by the Complainant’s work as an author, which the Respondent has sought to redirect for its own commercial benefit. This activity cannot confer rights and legitimate interests upon the Respondent within the meaning of the Policy. In all of these circumstances, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that it has no rights or legitimate interests in the disputed domain name. Accordingly, the second element under the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(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 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 your website or location or of a product or service on your website or location.” In general, for registration and use to be made out, the Complainant must show that the disputed domain name was registered in the knowledge of the Complainant’s rights and with intent to target these. The Complainant cannot claim notoriety as an author from the moment his first book was written or sold and indeed there is no submission to this effect. However, given that the Complainant’s first novel was published by a well-known publisher in 2016, has been translated into German in addition to the English version, and is available on major retail websites, it is reasonable to infer on the balance of probabilities that the Respondent would have been aware of the Complainant when the disputed domain name was registered in 2020. Furthermore, there is no other obvious or reasonable explanation available to the Panel for the Respondent’s registration of the disputed domain name than that the Respondent was targeting the Complainant and at least was seeking to benefit unfairly from the Internet traffic built up by the Complainant’s notoriety as an author. The Respondent registered the disputed domain name upon its expiration and has used this to redirect Internet traffic to promote its gambling-focused website. This suggests to the Panel that the Respondent is engaged in “drop catching”. As noted in Christopher Lane v. JInsoo Yoon (Kukmin),WIPO Case No. D2019-1388, adopting certain observations of the panel in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com,WIPO Case No. D2018-0540, in such a scenario, the knowledge and intention of a respondent should be judged objectively. Objective considerations may include, for example: (i) whether the domain name concerned has been registered without regard to whether it will abuse the trademark rights of a third party and without any apparent effort to avoid so doing; (ii) whether such registration abuses the trademark rights of the immediately-prior registrant; (iii) whether the value of such domain name derives primarily from the fact that it represents the complainant’s trademark, rather than from the fact that it contains arguably a descriptive term, such that the respondent may be considered to have registered the disputed domain name for the primary purpose of selling it to the complainant; and (iv) whether the respondent may be considered to have registered such domain name to prevent the complainant from reflecting its trademark in a corresponding domain name, so long as the respondent is found to have engaged in a pattern of such conduct. In the present case, viewing the matter objectively, the Panel considers that the Respondent would have had no reason to believe that the Complainant was relinquishing its rights in the J. PATRICK BLACK mark by virtue merely of the expiration of the disputed domain name. The Respondent’s books were sold under this mark as at the date of acquisition of the disputed domain name by the Respondent and they continue to be offered for sale. There is no suggestion that the Respondent goes by the name “J. Patrick Black” or is operating any genuine business activity which is legitimately linked to such name. There is no suggestion that such name has any descriptive value which the Respondent might have selected independently of the Complainant’s rights. Indeed, the Respondent’s business activities seem to be calculated to exploit the Complainant’s rights by repurposing Internet traffic intended for the Complainant’s website. Thus, the registration abuses the trademark rights of the immediately-prior registrant, namely, in this case, the Complainant. The Panel notes that although the Respondent has received an opportunity to explain why it registered the disputed domain name upon its expiration, the Respondent has chosen to remain silent. The Panel is unable to identify any good faith motivation that the Respondent might have had and, on the contrary, is of the opinion that the facts and circumstances, viewed objectively, are indicative of registration and use in bad faith. Accordingly, the third element under the Policy has been established. 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 Andrew D. S. Lothian
Sole Panelist
Date: May 18, 2021
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