FORCE Customs, Inc. v. darren vivolo / coast 2 coast charters
Claim Number: FA1906001848305
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <forcecustom.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2019; the Forum received payment on June 20, 2019.
On June 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <forcecustom.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2019 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@forcecustom.com. Also, on June 25, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides automobile customization services and is a leader in custom Jeep and truck conversions offering its customers the ability to choose from per-built customs available for sale, or to work with a specialist to select and purchase a base model, then design and customize that vehicle to the customer’s specifications. Complainant owns the FORCE CUSTOMS mark through its trademark registration with the State of Florida and other related service marks in the State of Florida. Respondent’s <forcecustom.com> domain name is confusingly similar and nearly identical to Complainant’s FORCE CUSTOMS mark.
Respondent has no rights or legitimate interests in the <forcecustom.com> domain name as Respondent uses the domain name for the sole purpose of infringing on Complainant’s mark by creating confusion in the marketplace as the domain name links users to a competitor’s website.
Respondent registered and is using the <forcecustom.com> domain name in bad faith as Respondent has offered the domain name for sale through use of GoDaddy’s click and bid services. Next, Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business for commercial gain through redirecting users to a competitor’s website. Respondent also engaged in typosquatting by registering a domain name that incorporates Complainant’s mark with a small typographical error. Finally, given the Respondent is a competitor in the same geographical region, Respondent must have had knowledge of Complainant’s mark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is FORCE Customs, Inc. (“Complainant”), of Tampa, Florida, USA. Complainant is the owner of a domestic state registration for the mark FORCE CUSTOMS, which it has continuously used since at least as early as April 2019, in connection with its provision of automobile customization services. Complainant also is the owner of numerous domain names related to its mark including <forcecustoms.com>.
Respondent is Darren Vivolo / Coast 2 Coast charters (“Respondent”), of Lithia, Florida, USA. Respondent’s registrar’s address is listed as Scottdale, Arizona, USA. The Panel notes that Respondent registered the <forcecustom.com> domain name on or about May 22, 2019. Although Respondent failed to file a response to the complaint in these proceedings, he did send correspondence to administrators indicating he had taken down his website after the proceedings began.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the FORCE CUSTOMS mark through its registration with the State of Florida. Registration of a mark with a State authority is sufficient to establish rights in the mark. See Ridgegate Investments, Inc. v. Cody McCarthy / Keller Williams Real Estate LLC, FA 1727947 (Forum May 26, 2017) (“The Panel also finds that the registration of a mark with a State authority is sufficient to establish rights in the mark.”). Here, Complainant has provided the Panel with a copy of its State of Florida trademark registration for the FORCE CUSTOMS mark (e.g. Reg. No. T19000000599., registered May 16, 2019). The Panel here finds that Complainant has sufficiently established rights in the FORCE CUSTOMS mark.
Next, Complainant argues that Respondent’s <forcecustom.com> domain name is confusingly similar to Complainant’s FORCE CUSTOMS mark. Although Complainant fails to make any specific arguments, the Panel notes that the domain name removes the letter “s” from Complainant’s FORCE CUSTOMS mark. Registration of a domain name that wholly incorporates a mark with the removal of a single letter does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”). Furthermore, the domain name also adds the “.com” generic top-level domain (“gTLD”), which is irrelevant when analyzing a domain name under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel here finds that Respondent’s <forcecustom.com> is confusingly similar to Complainant’s FORCE CUSTOMS per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <forcecustom.com> domain name to redirect users to a business competitor. Use of a disputed domain name to resolve to a competing website is generally not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides a screenshot of the resolving webpage which appears to redirect users to <bayshoreautomotive.com>, a website soliciting used cars. The Panel here finds that Respondent’s use of the disputed domain name to resolve to a competitor is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business for commercial gain through redirecting users to a competitor’s website. Using a confusingly similar domain name to compete with a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). As noted above, Complainant provides a screenshot of the resolving webpage which appears to redirect users to <bayshoreautomotive.com>, a website soliciting used cars. The Panel here finds that Respondent’s webpage supports a finding of registration and use in bad faith as it disrupted Complainant’s business and attempted to commercially benefit off Complainant’s mark in violation of Policy ¶¶ 4(b)(iii) & (iv).
Additionally, Complainant argues that Respondent has engaged in the practice of typosquatting. A respondent engages in typosquatting by registering a domain name with a small typographical error, which may provide evidence of bad faith per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, the difference between the <forcecustom.com> domain name and the FORCE CUSTOMS mark is the removal of the letter “s.” The Panel thus finds that Respondent engaged in typosquatting, providing additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <forcecustom.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 6, 2019
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