FC Online Marketing, Inc. v. Brett Ray
Claim Number: FA1510001643100
Complainant is FC Online Marketing, Inc. (“Complainant”), represented by Carlos A. Levya, Florida, USA. Respondent is Brett Ray (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <love2kickbox.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2015; the Forum received payment on October 20, 2015.
On October 20, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <love2kickbox.com> domain name is/are 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 October 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2015 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@love2kickbox.com. Also on October 21, 2015, 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 November 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, this 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 specialized website design and marketing support services to kickboxing, martial arts and fitness facilities
Complainant has rights in the ILOVEKICKBOXING.COM mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,009,496, registered August 9, 2011).
Respondent registered the domain name <love2kickbox.com> on or about September 7, 2014.
The contested domain name is confusingly similar to Complainant’s ILOVEKICKBOXING.COM mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Respondent is a commercial competitor of Complainant.
Respondent uses the domain name to promote the sale of services similar to those offered by Complainant.
Respondent makes this use of the domain name to acquire commercial gain.
This use of the domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s use of the domain name creates a likelihood of confusion among Internet users as to the possibility of Complainant’s association with the domain name and Respondent’s website.
Respondent knew of Complainant and its rights in the mark when it registered the <love2kickbox.com> domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ILOVEKICKBOXING.COM trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a UDRP complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of a disputed domain name was sufficient to prove that that complainant has rights in the mark under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <love2kickbox.com> domain name is confusingly similar to Complainant’s ILOVEKICKBOXING.COM mark. The domain name contains the essence of the mark, removing the letter “I” at the beginning of the mark as well as the letters “ing” from the word “boxing,” and adds the number “2” as a phonetic substitute for the word “to.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (finding that the introduction of spelling changes in the mark of another in creating a domain name does not avoid a finding of confusing similarity).
See also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that a respondent’s <go2AOL.com> domain name was confusingly similar to a UDRP complainant’s AOL mark).
And, on the point of Respondent’s identity as a commercial competitor of Complainant, see Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (concluding that the “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <love2kickbox.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Brett Ray,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <love2kickbox.com> domain name to market, for commercial gain, services similar to those of Complainant. This is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name such as would permit Respondent to take shelter in the provisions of either ¶ 4(c)(i) or ¶ 4(c)(iii) of the Policy. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010):
The Panel finds that capitalizing on the … marks of Complainant by attracting internet users to its … domain names where Respondent sells competing products … is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <love2kickbox.com> domain name, as alleged in the Complaint, is an attempt to acquire commercial gain by creating confusion among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003):
Respondent registered and used the … domain name in bad faith pursuant to Policy ¶… 4(b)… (iv) because Respondent is using a domain name that is confusingly similar to the … [complainant’s] mark for commercial benefit by diverting Internet users to the …[respondent’s] website, which sells competing goods and services.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ILOVEKICKBOXING.COM mark when it registered the <love2kickbox.com> domain name. This too is proof of Respondent's bad faith in registering the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For these reasons, the panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <love2kickbox.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 19, 2015
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