The Complainant is Jilliane Hoffman, LLC, United States of America (“United States”), represented by John Pellman, United States.
The Respondent is Scott Manford, United Kingdom, self-represented.
The disputed domain name <jillianehoffman.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 8, 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 an amended Complaint on August 8, 2019.
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 August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent sent several informal communications to the Center on August 27, 2019, and September 3, 2019. The Respondent did not submit a formal Response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 11, 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.
The Complainant Jilliane Hoffman is an author of thrillers and legal suspense novels. She resides in Florida, Unites States of America. Between 2004 and 2019, the Complainant published eight novels, which were released in North America and Europe. A number of her novels feature the same central character, creating a successful series of related novels. The Complainant’s books are sold in retail stores and online through Amazon.com internationally.
The Complainant registered the disputed domain name on June 4, 2003, and used the disputed domain name in association with a personal website to promote her books to the public.
The disputed domain name was originally registered by a company called Mednet Technologies, an entity owned by the Complainant’s representative John Pellman. In 2015, Mednet Technologies was acquired by another company, and for an unknown reason it was at this time that the email service regarding the management of the disputed domain name ceased being delivered to the Complainant’s representative, John Pellman. As a result, the disputed domain name renewal in 2018 was inadvertently missed.
The Respondent acquired the disputed domain name on June 4, 2018, and has redirected the disputed domain name to a website which promotes online gambling. At the time the Complaint was filed, the Respondent’s website featured an article called Online Slots & Gambling Discussion by Jilliane Hoffman.
The Complainant contends that she has acquired common law rights to the trademark JILLIANE HOFFMAN through the extensive use of her personal name as a successful author of mysteries and thrillers since 2004. The disputed domain name uses her personal name and common law trademark in its entirety.
The Complainant submits that the Respondent does not have any rights or legitimate interest in the disputed domain name. The Respondent acquired the disputed domain name through an unfortunate error on the part of the Complainant’s representative, and has created a related website with content which was not written by or connected to the Complainant in any way. This use of the disputed domain name is not evidence of a bona fide use of a domain name under the Policy.
Lastly, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent was likely aware of the Complainant, the Complainant’s reputation, and the Complainant’s common law rights in the name JILLIANE HOFFMAN. The Respondent’s website actually features a piece of writing Online Slots & Gambling Discussion which is falsely promoted as “by Jilliane Hoffman”. This conduct interferes with the Complainant’s ability to promote the sale of her books and business, through the use of her own personal domain name.
The Respondent sent emails on August 27, 2019, and September 3, 2019 requesting that the UDRP case be suspended pending negotiations with the Complainant. No further communications were received and the Respondent did not file a formal response to these proceedings.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have common law rights in the trademark and trade name JILLIANE HOFFMAN, by virtue of the fact that the mark is her personal name which has been extensively used in association with a series of successful novels over a period of fifteen years. The Complainant’s reputation in association with mystery and thriller novels has been established in North America and Europe.
The disputed domain name incorporates her name and mark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not serve to distinguish the disputed domain name from the trademark JILLIANE HOFFMAN in any manner.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant owns rights in the JILLIANE HOFFMAN common law trademark, by virtue of the uncontradicted evidence she filed in this proceeding, including evidence from the Wayback tool found at the website “web.archive.org” showing her own website associated with the disputed domain name, for more than fourteen years.
The Panel finds that the Respondent was not authorized or licensed to use the Complainant’s common law trademark, and the Respondent is not commonly known by the name “Jilliane Hoffman”. The Respondent acquired the confusingly similar disputed domain name by virtue of an error by the domain name management company Mednet Technologies. At the time the Complaint was filed the Respondent used the disputed domain name in association with a website which features an article called Online Slots & Gambling Discussion by Jilliane Hoffman. Without any response from the Respondent explaining his conduct, the Panel concludes that the use of the name Jilliane Hoffman was a deliberate attempt to trade on the reputation and goodwill of the Complainant. This conduct does not support a finding of a bona fide offering of goods and/or services in association with the disputed domain name.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not file a formal response to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
As set out above, the Panel is prepared to find that the Respondent was aware of the Complainant’s common law trademark rights in the JILLIANE HOFFMAN mark when he acquired the disputed domain name <jillianehoffman.com> in 2018. As set out above, this conclusion is supported by the fact that the Respondent only acquired the disputed domain name after many years of use by the Complainant. The Respondent has not brought forward any evidence to the contrary. The fact that the Respondent has directed the disputed domain name to a website which prominently features the article Online Slots & Gambling Discussion by Jilliane Hoffman, is particularly troubling. Without an explanation from the Respondent, the Panel concludes that this was an attempt by the Respondent to trade on the goodwill and reputation of the Complainant. The title of the article clearly implies that the Complainant herself has written and endorses the content of the website, which could be detrimental to the Complainant’s reputation. Internet users who are accustomed to logging into the <jillianehoffman.com> website prior to 2018 will be redirected to the Respondent’s site and misled into believing the Complainant is now involved with an online gambling business, and publishing articles about it. New customers of the Complainant, seeking more information about her novels, will similarily be directed to the Respondent’s website and misled into believing that the Complainant has written and endorsed the gambling content of the site. This conduct and these circumstances support a finding of intentional and abusive interference with the Complainant’s use of her trademark and personal name, contrary to the Policy.
The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent acquired and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.
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 <jillianehoffman.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: September 23, 2019