Twitter, Inc. v. Bessem Ayuk-Enow
Claim Number: FA2107001954111
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Bessem Ayuk-Enow (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twittersfleets.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2021; the Forum received payment on July 7, 2021.
On July 8, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <twittersfleets.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 July 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2021 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@twittersfleets.com. Also on July 13, 2021, 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 2, 2021.
On August 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Twitter, Inc., is a social networking service. Complainant has rights in the TWITTER mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <twittersfleets.com> domain name is confusingly similar to Complainant’s TWITTER mark as it incorporates the mark in its entirety, adding only the letter “s” after TWITTER, the term “fleets,” which directly relates to Complainant’s services, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <twittersfleets.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant licensed or authorized Respondent to use the TWITTER mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent registered the domain name on the same day that Complainant’s new “Fleets” feature was launched in order to sell the domain name. Respondent’s website is otherwise inactive.
Respondent registered and uses the <twittersfleets.com> domain name in bad faith. Respondent exhibits opportunistic bad faith by registering the domain names combining Complainant’s TWITTER mark and “Fleets” on the same day as Complainant’s launching its “Fleets” feature. Additionally, Respondent offers the domain name for sale. Furthermore, Respondent’s website has been inactive for the seven months following registration. Finally, Respondent has constructive and/or actual knowledge of Complainant’s rights in the TWITTER mark based on the fame of the mark and the fact that Respondent registered for a domain name that combined TWITTER and “fleets,” a direct reference to Complainant’s new service that was launched on the same day.
B. Respondent
Respondent contends as follows:
Respondent’s intention was not infringe on Complainant’s rights and Respondent was not aware that the variation of the name was trademarked when registering the domain name. The domain name was not registered out of malice.
Since registering the domain Respondent has not used it. Respondent forgot that he had registered the domain name until the Complaint was received.
The domain name should not be considered as having been registered and being used in bad faith because has not used it since registering for it. Respondent ultimately forgot that he registered the domain name the moment he purchased it. Respondent has not used the domain name for personal or financial gain.
Complainant has rights in the TWITTER mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the TWITTER trademark.
Respondent opportunistically registered the at-issue domain name and uses it to host a parking page.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the TWITTER mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <twittersfleets.com> domain name consists of Complainant’s TWITTER trademark followed by an “s” and the generic term “fleets,” with all followed by the top-level domain name “.com.” Under the Policy the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the domain name from the TWITTER mark. Therefore, the Panel concludes that Respondent’s <twittersfleets.com> domain name is confusingly similar to Complainant’s TWITTER trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <twittersfleets.com> indicates that “Bessem Ayuk-Enow” is the domain name’s registrant. There is nothing in the record before the Panel that might tend to prove that Respondent is otherwise known by the <twittersfleets.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent opportunistically registered for the domain name on the same day that Complainant’s new “Fleets” feature was launched. It is thus clear that Respondent registered the trademark laden <twittersfleets.com> domain name to capitalize on Complainant’s trademark and the new “Fleets” feature. Respondent’s use of the domain name in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). While as discussed below it is not clear that Respondent has unequivically offered to sell or transfer the domain name per Policy ¶ 4(b)(i), the mere fact of Respondent’s opportunistic registration indicates that Respondent has registered the domain name to speculate and later capitalize on its trademark value, either by sale or transfer of the domain name pursuant to Policy ¶ 4(b)(i), or by otherwise benefiting in some manner by directly using the domain name to address an online webpresence. Such speculative holding, inferred from Respondent’s opportunistic registration of <twittersfleets.com>, is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <twittersfleets.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’ registered <twittersfleets.com> on the same day that Complainant’s launched its new “Fleets” feature. Respondent’s registration of a domain name incorporating Complainant’s famous TWITTER mark and a new related feature, “Fleets,” shortly after such feature was announced and launched, shows opportunistic bad faith and permits finding Respondent acted in bad faith under the Policy. See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week); see also Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV (which received widespread news coverage)). Respondent’s statement that the domain name was not registered for financial gain fails to overcome the strong inference that the domain name was registered to take advantage of Complainant’s launch of the “Fleets” feature by combining “Fleets” with Complainant’s trademark in the at-issue domain name.
Next, the parking page addressed by <twittersfleets.com> states that the “domain name may be for sale.” However, the webpage goes on to declare: “[w]e can verify that the domain name is for sale over the phone…” thereby suggesting that it may not be for sale. No selling price posted on the parking page. Offering a confusingly similar domain name for sale or trade for an amount in excess of the domain name’s cost may indicate bad faith pursuant to Policy ¶ 4(b)(i), but here the “offer” is ambiguous. It only advises that that the domain name “may be for sale” and fails to list any price certain such that the Panel might find an offering price in excess of the domain name’s cost. Therefore, the operative facts necessary for the Panel to find bad faith per Policy ¶ 4(b)(i) are here lacking.
Finally, Respondent registered its <twittersfleets.com> domain name knowing that Complainant had trademark rights in TWITTER. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent concurrent registration of the <twittersfleets.com> domain name with Complainant’s launch of its “Fleets” feature. While Respondent claims that he was not aware that the variation of the name was trademarked when registering the domain name, he does not deny that he knew of Complainant’s rights in the TWITTER trademark prior to registration. Nor would such a denial be credible. Respondent’s prior knowledge of Complainant's trademark demonstrates that Respondent registered and used its <twittersfleets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twittersfleets.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 9, 2021
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