The Complainant is CBS Maxpreps Inc., United States of America (“United States”), represented by ViacomCBS Inc., United States.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Zaenab Lestari, 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 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2021, 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 the Complainant on March 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 22, 2021. 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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021. The Center appointed Tony Willoughby as the sole panelist in this matter on April 16, 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. The Respondent used a privacy service when registering the Domain Name. The Respondent’s identity was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to amend the Complaint followed on from that disclosure. In response to that invitation, the Complainant added the underlying registrant as an additional respondent to the Complaint. For the purposes of this decision, the Panel treats the underlying registrant as the Respondent and all references herein to the “Respondent” are references to Zaenab Lestari. 4. Factual Background The Complainant is a subsidiary company of the global mass media company ViacomCBS Inc. The Complainant provides its online services through inter alia a website at “www.maxpreps.com” operated by a sister company. It is an online network specializing in the coverage of American high school sports. The The Complainant is the registered proprietor of several United States trade mark registrations covering the name “Maxpreps”. Those registrations include by way of example the following registrations: - United States Registration No. 3,233,098 MAXPREPS (word mark) registered on April 24, 2007 for various advertising and entertainment services in classes 35 and 41. - United States Registration No. 3,515,966 MAXPRESS (device mark) registered on October 14, 2008 for advertising services in class 35. The mark consists of the wording “Maxpreps” with the letter “x” representing a human being. The mark is over and underlined with the “x” breaking through both lines. The Domain Name was registered on August 26, 2020 and currently redirects to a webpage message reading “this Connection Is Not Private – This website may be impersonating ‘hstv.digital’ to steal your personal or financial information. You should go back to the previous page.” Prior to the filing of the Complaint the Domain Name was connected to a website replicating the look and feel of the Complainant’s website and featuring prominently the Complainant’s MAXPREPS trade mark and a close variant of the “x” device as it appears in the above-mentioned device mark registered under United States trade mark registration No. 3,515,966. The website appeared to specialize in American high school sports. It invited visitors to create an account by, in the first instance, submitting an email address and a password, if they wished to view live sports. On September 8, 2020, the Complainant emailed the Registrar notifying the Registrar of the Complainant’s trade mark rights and drawing the Registrar’s attention to what it categorized as the flagrantly infringing content of the website connected to the Domain Name. The Complainant requested the Registrar to disable the Respondent’s website. The Registrar responded on September 14, 2020, stating that “the infringing activity is completely removed from the reported website.” By December, 2020, that objectionable content had reappeared. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. The Complainant seeks transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the 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. B. Identical or Confusingly Similar The Domain Name comprises the Complainant’s registered trade mark MAXPREPS and the “.video” generic Top-Level Domain identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s MAXPREPS registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests The Complainant asserts that it has no affiliation with the Respondent and has granted the Respondent no authorization to use its trade mark. It contends that the Respondent’s website replicates and is intended to replicate the Complainant’s website with a view to deceiving Internet users and diverting traffic from the Complainant’s website for commercial gain. Further, the Complainant has produced evidence to show that the Respondent has set up mail exchanger records for the Domain Name thereby allowing the Domain Name to be used for emails and thus expanding the scope for deception and confusion. The Panel finds that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. The Respondent has not answered the Complainant’s contentions, but in any event the Panel is satisfied from the factual background set out in section 4 above, which is amply supported by evidence annexed to the Complaint, that the Respondent registered the Domain Name for the purpose for which he has been using it, namely to deceive Internet users into believing that his website is the website of the Complainant, in other words, to impersonate the Complainant and its online service and for commercial gain. On no basis could such a use give rise to rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith By the same reasoning the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. True, the Respondent appears currently to be making no active use of the Domain Name, but in his hands the objectionable use could restart at any time, thus constituting an unjustifiable threat hanging over the head of the Complainant and thus a continuing use of the Domain Name in bad faith. Moreover, there is nothing before the Panel to show that the Respondent’s ability to use the Domain Name for email purposes has been disabled. 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 Tony Willoughby
Sole Panelist
Date: April 27, 2021
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