Valnet Inc. v Privacy service provided by Withheld for Privacy ehf /

WIPO Case No. D2022-1357

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valnet Inc. v. Privacy service provided by Withheld for Privacy ehf /
Moqueem Ahmed

Case No. D2022-1357

1. The Parties

The Complainant is Valnet Inc., Canada, represented internally.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Moqueem Ahmed,

Pakistan.

2. The Domain Name and Registrar

The disputed domain name <screenrant.info> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2022. On April 19, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2022, 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 April 21, 2022, 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 amended Complaint on April 21, 2022.

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 May 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2022.

page 2

The Center appointed Adam Taylor as the sole panelist in this matter on June 14, 2022. 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 operates an entertainment website branded “Screen Rant” at “ offering news and other content in relation to television, films, and video games.

The Complainant owns United States of America trade mark No. 4844638 for SCREEN RANT, filed on

March 5, 2015, registered on November 3, 2015, in class 41.

The disputed domain name was registered on June 2, 2021.

On or around July 26, 2021, the Complainant sent a takedown notice to the Respondent’s host provider. In response, the Respondent emailed the Complainant on July 30, 2021, claiming that the Complainant had no right to serve such a notice because the Respondent had bought the disputed domain name with his own

money and had used his own articles on the website. The Respondent said that the Complainant would
have to buy the disputed domain name if it wanted him to stop using the disputed domain name and invited
the Complainant to put forward its best offer.

On September 21, 2021, the Complainant emailed the Respondent, asserting its trade mark rights. The Respondent replied on the same day stating that, as a lawyer, he knew about the law. He claimed that he was justified in buying the disputed domain name because it contained the “.info” Top-Level Domain (“TLD”) suffix, whereas the Complainant’s domain name used the “.com” TLD, and because the Respondent published his own content. The Respondent offered to sell the disputed domain name to the Complainant for USD 10,000.

On April 5, 2022, the Complainant sent a cease and desist letter to the Respondent, who responded the same day in similar terms to his previous email.

As of April 12, 2022, the disputed domain name resolved to an entertainment news website with a

“SCREENRANT” logo similar to that of the Complainant.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant’s trade mark and website is well known around the world.

The disputed domain name is identical to the Complainant’s trade mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has not authorised the Respondent to register the disputed domain name or to use its trade mark.

The use of the disputed domain name does not constitute a bona fide offering of goods or services as the

Respondent deliberately chose it to piggyback on the Complainant’s brand.

The disputed domain name was registered and is being used in bad faith.

page 3

The Respondent registered the disputed domain name with knowledge of the Complainant’s famous website and in order to sell the disputed domain name to the Complainant for a substantial sum of money, which indeed the Respondent attempted to do on a number of occasions.

The Respondent also set out to create a likelihood of confusion with the Complainant’s website and attract the Complainant’s customers, including by prominent use of the Complainant’s mark as well as by use of a similar look and feel, and the same kind of content, as the Complainant’s website.

The Respondent’s use of a privacy service constitutes further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant
has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established registered rights in the mark SCREEN RANT.

Disregarding the TLD suffix, the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, for reasons explained below the Panel considers that the Respondent has used the disputed domain name to create a likelihood of confusion with the Complainant’s mark, most likely for the purpose of encouraging the Complainant to buy the disputed domain name from the Respondent for a substantial sum. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests and there is no rebuttal by the Respondent.

page 4

For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes the following:

1.        The disputed domain name reflects the Complainant’s distinctive name and trade mark.

2.        The Respondent has used the disputed domain name for a website that effectively impersonates the Complainant, including by use of a similar version of the Complainant’s logo as well as a similar look and feel, and the same kind of content, as the Complainant’s website.

3.        The Respondent has not filed a Response in this proceeding to deny the Complainant’s assertions of knowledge and bad faith.

4.        In the course of his pre-action correspondence with the Complainant, the Respondent merely claimed that he was entitled to register the disputed domain name because it contained a different TLD suffix to that used by the Complainant, and because he had created the website content himself. But the Respondent did not put forward any potentially legitimate explanation for registration and use of the disputed domain name.

5.        The Respondent’s response to being informed of the Complainant’s takedown notice by his host provider was to contact the Complainant to say that it would have to buy the disputed domain name from him if it wanted to stop him using the disputed domain name.

In these circumstances, the Panel considers that the Respondent registered and used the disputed domain name to impersonate the Complainant, most likely with a view to encouraging the Complainant to buy the disputed domain name from him for a substantial sum.

In the Panel’s view, the foregoing constitutes registration and use of the disputed domain name in bad faith and the Complainant has therefore established the third element of paragraph 4(a) 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, <screenrant.info>, be transferred to the Complainant.

/Adam Taylor/ Adam Taylor Sole Panelist Date: June 28, 2022