WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daily Trading Profits, LLC v. Okechuwku Iwara

Case No. D2019-1928

1. The Parties

The Complainant is Daily Trading Profits, LLC, United States of America (“United States”), represented by Law Offices of Shiloh A. Coleman, PLLC, United States.

The Respondent is Okechuwku Iwara, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <chrisdunntv.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2019. On August 8, 2019, a first amended Complaint was filed with the Center. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 9, 2019, 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 August 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on August 14, 2019.

The Center verified that the Complaint together with the amended Complaints 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 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 25, 2019. 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

A. Complainant

The relevant facts can be summarized as follows.

The Complainant is an United States company and is a corporate vehicle for a Mr. Chris Dunn who is its president and owner. Mr. Dunn through the Complainant provides books, courses, and other products directed at teaching individuals investment related skills. The Complainant promotes Mr. Dunn and its products and services through the website “www.chrisdunn.com”. The Complainant has exclusive rights to use the name Chris Dunn in reference to the products and services created and/or facilitated by Mr. Dunn in its marketing and product offerings, and the Complainant has done so continually since its inception in 2009.

The Complainant also promotes Mr. Dunn and its products and services through social media using “@chrisdunntv” as a variation of the name “Chris Dunn”, and has done so since 2009. The social media profile name “@chrisdunntv” is used on Facebook (19,157 followers), Instagram (6,002 followers), Twitter (47,000 followers), and on YouTube (210,342 subscribers). At any given time, between 250,000 and 300,000 registered users of the Complainant’s social media services are actively interacting with content posted by the Complainant through the “@chrisdunntv” social media profiles, which point these potential customers to the website “www.chrisdunn.com” as an online location for conducting commerce with the Complainant. Commerce conducted utilizing “www.chrisdunn.com” has resulted in approximately 4,000 individual unit sales of the Complainant’s books, courses, and events.

B. Respondent

The Respondent registered the Disputed Domain Name on March 21, 2019. The Respondent has linked the Disputed Domain Name to a website (the “Respondent’s Website”) which purports to be a website operated by Mr. Dunn. Its content is clearly copied from the Complainant’s website. Customers using the Respondent’s Website are given the impression they are interacting with the Complainant, when in fact they are not.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Complainant says that Mr. Dunn is extremely well known and in view of the activity it carries out (see above) it has common law trademark rights in the name “Chris Dunn” (the “CHRIS DUNN trademark”).

It says the Disputed Domain Name is confusingly similar to the CHRIS DUNN trademark. Addition of the term “tv” does not distinguish the Disputed Domain Name particularly given the Complainant uses the term “chrisdunntv” on social media.

The Complainant says the Respondent has no rights or legitimate interests in the term “chris dunn” or “chrisdunntv”.

It also says that the Disputed Domain Name was registered and is being used in bad faith. In this respect the Complainant says that the Respondent’s Website is clearly seeking to confuse customers that it is a website operated by the Complainant. It says it may also be defrauding customers as part of a dishonest scheme.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where the Disputed Domain Name appears to have been registered by a privacy or proxy service (“WhoisGuard Protected, WhoisGuard, Inc., Panama”). However, the concerned Registrar confirmed the underlying registrant details of the Disputed Domain Name to be “Okechuwku Iwara”.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be Okechuwku Iwara and references to “the Respondent” are to that person.

6.2 Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with 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 Panel finds that the Complainant has rights in The CHRIS DUNN trademark. The Complainant has not relied upon any registered trademarks. The Panel however finds that the Complainant has rights in the unregistered trademark CHRIS DUNN for the purpose of this proceeding. The evidence establishes the Complainant trades under that name on a significant basis and has developed a substantial reputation for its products and services (see above).

The Panel agrees with the approach in WIPO Overview 3.0 concerning this issue at paragraph 1.3:

“What does a complainant need to show to successfully assert unregistered or common law trademark rights?

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

The Panel does not consider the term CHRIS DUNN to be descriptive and is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term. Accordingly the Panel is satisfied that the Complainant’s use (see above) is sufficient to have established unregistered trademark rights.

The Panel finds Disputed Domain Name is confusingly similar to the CHRIS DUNN trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). In the present case the Panel agrees with the Complainant that “tv” is a minor difference and does not remove the confusing similarity.

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CHRIS DUNN trademark. The Complainant has prior rights in the CHRIS DUNN trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel therefore finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present case, it was manifestly a deliberate decision by the Respondent to adopt Mr. Dunn’s name as part of the Disputed Domain Name. This was clearly part of a deliberate plan to promote the Respondent’s Website as one operated by the Complainant or Mr. Dunn. In the present circumstances, the distinctive nature of the CHRIS DUNN trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the CHRIS DUNN trademark, and the fact that the Disputed Domain Name combines the CHRIS DUNN trademark with the term “tv” and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use were in bad faith.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(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 the present circumstances the Panel concludes that factor (iv) applies. The Panel does not need to reach a conclusion on whether the Respondent’s Website is dishonest – it is manifestly at least deliberately confusing and being operated for some type of commercial gain. The Panel also notes it is particularly so given that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel concludes that none exists.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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, <chrisdunntv.com>, be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: October 11, 2019