NWT Holdings LLC v. William Tiffee, NAGB llc.
Claim Number: FA1411001589877
Complainant is NWT Holdings LLC (“Complainant”), represented by Michael G. Atkins of Atkins Intellectual Property, PLLC, Washington, USA. Respondent is William Tiffee, NAGB llc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefirefly.us>, 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 National Arbitration Forum electronically on November 13, 2014; the National Arbitration Forum received payment on November 13, 2014.
On November 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <thefirefly.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2014 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@thefirefly.us. Also on November 14, 2014, 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 December 15, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
1. Complainant uses FIREFLY to identify its e-cigarette products. This mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,489,299, registered Feb. 25, 2014). The <thefirefly.us> domain name merely adds the term “the” and the ccTLD “.us” to Complainant’s trademark.
2. Respondent has no right or legitimate interest in holding <thefirefly.us> domain name. First, Respondent has no trademark using the FIREFLY mark. Further, Respondent is not commonly known by the <thefirefly.us> domain name. Finally, Respondent is selling counterfeit goods through the domain name’s website. See Compl., at Attached Ex. 5.
3. Respondent registered or is using the domain name in bad faith. Respondent is disrupting Complainant’s business. Respondent is wrongfully profiting from the likelihood Internet users will assume the competing/counterfeit goods sold on this confusingly similar domain name are legitimate FIRELY goods. Further, Respondent had actual knowledge of Complainant’s rights prior to registering and using this domain name.
B. Respondent
Respondent did not submit a response.
Complainant is NWT Holdings LLC of Seattle, WA, USA. Complainant is the owner of domestic and international registrations for the mark FIREFLY which it has used continuously since at least as early as February, 2014 in connection with its sale of electronic cigarette vaporizers and associated products.
Respondent is William Tiffee, NAGB llc., of Petaluma, CA, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The <thefirefly.us> domain name was registered on or about May 9, 2014.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 uses FIREFLY to identify its e-cigarette products. This mark has been registered with the USPTO (e.g., Reg. No. 4,489,299, registered Feb. 25, 2014). This Panel finds that the USPTO registration here is sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant also argues that the <thefirefly.us> domain name merely adds the term “the” and the ccTLD “.us” to Complainant’s trademark. The Panel finds that the “.us” TLD is not dispositive in this analysis. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Further, the Panel finds the addition of the generic term “the” does not defeat the confusing similarity of this domain name. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
The Complainant has proven this element.
The Panel recognizes 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 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). The Complainant has met this burden.
Complainant claims that Respondent has no trademark interest in using the FIREFLY mark. The Panel finds that nothing provided indicates that Respondent has obtained a trademark identical to the <thefirefly.us> domain name so as to establish Policy ¶ 4(c)(i) rights in the domain name. See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Further, Complainant argues that Respondent is not commonly known by the <thefirefly.us> domain name. The Panel notes that “William Tiffee / NAGB LLC” is listed as the registrant of record for this domain name. The Panel finds no evidentiary support to hold that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is selling counterfeit goods through the domain name’s website. The Panel notes that the domain name’s website appears to promote “Zhifa” and “Firefly” goods to consumers. The Panel finds the unauthorized promotion of Complainant’s own goods alongside competing products is neither a Policy ¶ 4(c)(ii) bona fide offering, nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant first argues that Respondent is disrupting Complainant’s business through its use of the domain name for a competing enterprise. The Panel again notes that e-cig goods are indeed up for sale on the domain name’s resolving website. The Panel finds that Respondent’s actions sought to disrupt Complainant’s business by promoting and selling a competing line of goods through a confusingly similar domain name thus supporting a finding of Policy ¶ 4(b)(iii) bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant argues that Respondent is wrongfully profiting from the likelihood Internet users will assume the competing/counterfeit goods sold via the confusingly similar domain name are legitimate FIRELY goods. The Panel finds that Respondent’s display of competing e-cig goods on its domain name’s website creates a likelihood of confusion through which Respondent may profit, thus supporting a finding of Policy ¶ 4(b)(iv) bad faith. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Complainant has proven this element.
Because 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 <thefirefly.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 29, 2014
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