Kyle Myers v. Frank Ronald
Claim Number: FA1205001444118
Complainant is Kyle Myers (“Complainant”), represented by Ryan C. Bernardo of Braun Blaising McLaughlin & Smith, PC, California, USA. Respondent is Frank Ronald (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fpssrussia.com>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 15, 2012; the National Arbitration Forum received payment May 15, 2012.
On May 21, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <fpssrussia.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2012, 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@fpssrussia.com. Also on May 23, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
OTHER CORRESPONDENCE
The parties filed no additional pleadings; but Complainant submitted an email from a Frank@fpssrussia.com that said in part “I can transfer the domain to you if you would like. Maybe I can help FPSRRUSSIA build a cool website where he can talk to fans like he does on facebook.”
The Panel finds that this communication does not constitute Other Correspondence for the Arbitrator to consider and that it does not constitute a formal offer to transfer. Therefore the Arbitrator finds that it is appropriate to reach a formal resolution on the merits of this dispute.
Given the development, continuous and extensive use and popularity, such as would show secondary meaning, Complainant established that it has common law rights in the mark contained in the disputed domain name.
Complainant established that it filed for legal rights in the mark prior to the date of Respondent’s registration of the disputed domain name.
While Complainant did not argue confusing similarity, Complainant presented evidence that confusion exists between its mark and the disputed domain name such as would persuade the Panel that the disputed domain name is confusingly similar to the mark.
Respondent registered the disputed domain name prior to legal registration of the mark but after Complainant’s filing for such registration and well after Complainant’s use of the mark in commerce.
Respondent is not commonly know by the disputed domain name and has used the disputed domain name in ways other than bona fide use, causing confusion among Complainant’s customers.
Respondent had notice of Complainant’s rights in the mark prior to the registration and shows such knowledge by the way in which Respondent has appropriated Complainant’s goods and used knock-off goods as Complainant’s goods or passed off the disputed domain site as Complainant’s site for Respondent’s financial gain.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to show 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it does not have, and does not need to have, a trademark registration for its FPS RUSSIA mark. The Panel notes that Complainant is correct that, under Policy ¶ 4(a)(i), a complainant need not own a valid trademark registration in order to establish rights in the asserted mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant claims that it has continuously and extensively used the FPS RUSSIA mark since April 19, 2010. Complainant urges that it has used the FPS RUSSIA mark to provide video productions through its YouTube channel named FPS RUSSIA. The Panel notes that, according to Complainant’s submitted screenshots of its video channel, Complainant has 2,314,087 subscribers to its channel and its videos have been viewed 412,162,456 times. See Complainant’s Exhibit 2. The Panel also notes that the screenshots also show that Complainant began its video channel with YouTube on April 19, 2010. Further, Complainant contends that it filed a trademark application with the USPTO for the FPS RUSSIA mark (Ser. No. 85,456,598 filed October 26, 2011). Complainant also submits screenshots of a Google search for the FPS RUSSIA mark to indicate that its official website, <fpsrussia.com>, and its YouTube channel videos are the returned results. The Panel finds that Complainant established secondary meaning in the FPS RUSSIA mark, and finds that Complainant has demonstrated common law rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel notes that Complainant does not present a confusingly similar argument under Policy ¶ 4(a)(i), other than to claim that actual confusion has occurred between its mark and the disputed domain name. Despite this lack of argument, the Panel finds that the <fpssrussia.com> domain name is confusingly similar to the FPS RUSSIA mark under Policy ¶ 4(a)(i) where the domain name adds the letter “s,” removes the space between the terms, and adds the generic top-level domain (“gTLD”) “.com.” See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that Complainant does not present a Policy ¶ 4(c)(ii) argument. However, the Panel looks to the WHOIS information on record to make a determination of whether or not Respondent is commonly known by the disputed domain name. In that respect, the Panel notes that the WHOIS information on file identifies the registrant of the <fpssrussia.com> domain name as “Frank Ronald.” Therefore, the Panel finds that Respondent is not commonly known by the <fpssrussia.com> domain name under Policy ¶ 4(c)(ii), based upon the WHOIS information on file and the lack of a Response from Respondent. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant argues that Respondent is using the disputed domain name to post video productions that were taken from Complainant’s YouTube Channel. Complainant also argues that Respondent “makes available knock-off t-shirts and other merchandise for sale using Complainant’s ‘FPS Russia’ mark.” Complainant contends that the sole purpose of Respondent’s website is to commercially gain from the use of Complainant’s FPS RUSSIA mark. Complainant asserts that actual confusion and mistakes have occurred as shown by the comment sections of Respondent’s website. See Complainant’s Annex 7. The Panel finds that Respondent’s use of the disputed domain name in such a manner does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent registered and is using the disputed domain name for the sole purpose of profiting from the confusion created with Complainant’s FPS RUSSIA mark and websites. Complainant claims that commercial gain ensues from Respondent’s sale of “knock-off” t-shirts and other goods, as well as the sale of advertising space on the website. Complainant also argues that Respondent has embedded copies of Complainant’s videos on its website in an effort to confuse Internet users into believing that Respondent’s website is sponsored by Complainant or is Complainant’s website. Complainant asserts that actual confusion of Internet users has occurred as shown by the “comments” page on Respondent’s website. The Panel agrees with Complainant’s assertions and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <fpssrussia.com> domain name BE TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson,
Panelist
Dated: June 29, 2012.
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