Fresh from the unbelievable luck department arrives a UDRP decision involving the domain names Oniforce.com and 0n1force.com, filed by two Complainants: Oni Press and ONI-Lion Forge Publishing Group LLC.
The Complainants provide a variety of comics, games and merchandise online via the Onipress.com website. They own the mark ONI PRESS, all while the Respondent has filed a trademark application that replaces the “O” in “Oni” with the number zero “0” and the letter “I” in “Oni” with the number one “1”.
In their response, the Respondent noted that they were simply an intern at the company that performed these deeds and are no longer employed with them:
“I would like to clarify that I am not the registrant of the mentioned entity. My association with the said company was in the capacity of an intern, and I am no longer employed there. My tenure was limited and I did not have any authority or responsibility related to domain registration or any related matters.”
In her response, the Respondent adds the names of the persons involved with the company and she is very cooperative:
“I assure you that I am committed to resolving this matter in an appropriate and responsible manner, despite no longer being associated with the company. I understand the importance of upholding the integrity of domain name usage and protecting intellectual property rights.”
The fun part: The Forum (NAF) panelist delivered a decision favoring the Respondent:
The Panel is unable to make any finding as to whether Complainants have common law rights in the marks ONI PRESS or ONI since they have provided no evidence in this regard. […] Although “oni” is identical and “0n1” is confusingly similar to the ONI word element of that mark, the Panel finds the combination of “oni” and “0n1” with the descriptive word “force” in the oniforce.com and 0n1force.com domain names distinguishes the domain names from the ONI PRESS mark. This is so despite the word “force”, which may be used both as a noun and as a verb, often being used as a verb in the same way as the word “press”. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored under this element.
Final decision: Deny transfer of the domains oniforce.com and 0n1force.com to the Complainant. Kudos to the former intern that responded to clarify things.
The domain transfer was denied.
Oni Press and ONI-Lion Forge Publishing Group, LLC v. Emily Berganza / E. Art
Claim Number: FA2308002057696
PARTIESComplainants are Oni Press and ONI-Lion Forge Publishing Group, LLC (“Complainants”), represented by Renee Reuter, Missouri, USA. Respondent is Emily Berganza / E. Art (“Respondent”), New Orleans, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are oniforce.com and 0n1force.com, registered with Google LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainants submitted a Complaint to Forum electronically on August 15, 2023. Forum received payment on August 15, 2023.
On August 16, 2023, Google LLC confirmed by e-mail to Forum that the oniforce.com and 0n1force.com domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oniforce.com and postmaster@0n1force.com. Also on August 24, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 24, 2023.
On September 8, 2023, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainants request that the domain names be transferred from Respondent to Complainants.
PRELIMINARY ISSUES
A. Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants are related companies. Oni Press is the registrant of the domain name onipress.com and ONI-Lion Forge Publishing Group, LLC is the owner of the trademark registration for ONI PRESS and design, which serves as a basis for the Complaint. Complainants cross license the onipress.com domain name and ONI PRESS mark so that the mark is used on the website at onipress.com.
As this Panel found in Oni Press and ONI-Lion Forge Publishing Group, LLC v. David Colson, FA2307002052903 (Forum, August 8, 2023), there is a sufficient nexus or link between Complainants such that each may claim to have rights to the oniforce.com and 0n1force.com domain names listed in the Complaint.
B. Multiple Respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum’s Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainants submit that both domain names appear to be owned by the same individual, since both Whois records have the same owner name, same telephone number and address and very similar email addresses.
Both domain names were registered within a week of each other, through the same registrar, using the same privacy service. For these reasons, Complainants request “to move forward with the two Respondents treated as one”.
Since the Registrar confirmed that both domain names are registered in the name of the same domain name holder, Emily Berganza, the Panel finds that there is only one Respondent in this proceeding.
PARTIES’ CONTENTIONS
A. Complainants
Complainants, Oni Press and ONI-Lion Forge Publishing Group, LLC, provide a variety of comics, games and merchandise online via the “www.onipress.com” website.
In addition to common law rights which Complainants have established in the term ONI PRESS, through use, in part, of an online store located at “www.onipress.com”, Complainant ONI-Lion Forge Publishing Group, LLC has registered the design mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s oniforce.com and 0n1force.com domain names are confusingly similar to Complainants’ marks. Dictionary.com defines “press” in some instances using the word “force”. Complainant has used the term ONI as a standalone mark, therefore the addition of “FORCE” to the mark, “ONI” or the confusingly similar letter and number combination “0N1”, is confusingly similar.
Respondent lacks rights or legitimate interests in the oniforce.com and 0n1force.com domain names since Respondent is not licensed or authorized to use Complainants’ ONI PRESS marks as a domain name.
It is virtually impossible to conceive of any plausible active use of the domain names by Respondent that would not be illegitimate.
Respondent is not commonly known by the domain names and has shown no bona fide intention to use them for any reason other than to impersonate Complainants or disrupt Complainants’ business.
Respondent has applied to register a trademark (US App. No. 79367182) that replaces the “O” in “Oni” with the number zero “0” and the letter “I” in “Oni” with the number one “1”. Although both domain names were registered, only oniforce.com points to a working website. 0n1force.com does not point to a working website.
The domain names were registered and used by Respondent without any bona fide use other than to improperly benefit from the fame of Complainants’ marks and attempt to harm Complainants’ current and potential customers and Complainants’ business and reputation. Respondent uses the oniforce.com domain name in connection with cartoon characters and comic books or graphic novels directly competing with Complainants.
Respondent registered the oniforce.com and 0n1force.com domain names in bad faith with constructive or actual knowledge of Complainants’ rights in the ONI PRESS marks and uses them in bad faith by diverting Internet users to a site that competes with Complainants.
It is no accident that oniforce.com, which points to the working website, used as its first three characters “oni” instead of the number zero “0”, letter “N”, number one “1” in Respondent’s trademark application. Both Complainants and Respondent promote similar goods and services online and often at the same trade show, Comic-con.
The only conceivable purpose of the use of the domain names is to compete with Complainant, to disrupt Complainant’s business or achieve some financial gain from confused consumers looking for Complainants’ products.
B. Respondent
On August 25, 2023, Respondent emailed Forum informally as follows:
“I am writing in response to the case document that was served to me in accordance with Rule 2 of the ICANN UDRP policy.
I would like to clarify that I am not the registrant of the mentioned entity. My association with the said company was in the capacity of an intern, and I am no longer employed there. My tenure was limited and I did not have any authority or responsibility related to domain registration or any related matters.
For your convenience and to ensure that the correct individuals are notified in relation to this case, I would kindly ask you to redirect your communication to:
• William Tong – contactwilliamtong@gmail.com
• Henry – henry@0n1force.com
These are the appropriate contacts who should be able to assist you further on this matter.
I appreciate your understanding and prompt attention to this matter to avoid any unnecessary confusion or delays.”
In her formal Response, Respondent submitted:
“First and foremost, I would like to clarify that I am no longer employed by 0n1Force as of April 2022. As such, I no longer possess the necessary authorization to access accounts associated with the company, including Google accounts or any other corresponding websites. Therefore, I am unable to make any changes to the mentioned domains or take any actions related to the administrative proceedings.
I kindly request that any communication regarding this matter be directed to the appropriate individuals who are currently responsible for managing the company’s affairs. The CEO, Mr. Henry Finn, and the CSO, Mr. William Tong, are the designated points of contact for matters of this nature. Their contact details have been provided in the response document that you have received.
I assure you that I am committed to resolving this matter in an appropriate and responsible manner, despite no longer being associated with the company. I understand the importance of upholding the integrity of domain name usage and protecting intellectual property rights.
Please do not hesitate to reach out to Mr. Henry Finn or Mr. William Tong for any further information or clarification regarding the current status of the domains in question and their respective management.
Thank you for your understanding and cooperation in this matter. I appreciate your attention to this issue and hope for a timely resolution.”
FINDINGS
Complainants have failed to establish all the elements entitling them to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainants have shown that ONI-Lion Forge Publishing Group, LLC has rights as registrant in the ONI PRESS word and design mark through registration with the USPTO (Reg. No. 6,424,300, registered on July 20, 2021) and the Panel accepts that Oni Press has rights as licensee.
The Panel is unable to make any finding as to whether Complainants have common law rights in the marks ONI PRESS or ONI since they have provided no evidence in this regard.
As stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743:
“Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark.”
Applying this test, it is clear that the textual components of Complainant’s word and design mark are the two words ONI PRESS.
Although “oni” is identical and “0n1” is confusingly similar to the ONI word element of that mark, the Panel finds the combination of “oni” and “0n1” with the descriptive word “force” in the oniforce.com and 0n1force.com domain names distinguishes the domain names from the ONI PRESS mark. This is so despite the word “force”, which may be used both as a noun and as a verb, often being used as a verb in the same way as the word “press”. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored under this element.
Accordingly, the Panel finds neither of Respondent’s oniforce.com and 0n1force.com domain names to be identical or confusingly similar to Complainants’ mark.
Complainants have failed to establish this element.
Rights or Legitimate Interests and Registration and Use in Bad Faith
In light of the Panel’s decision in relation to the first element, it is unnecessary to consider these elements.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the oniforce.com and 0n1force.com domain names REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: September 11, 2023
