Tytenz Sports, LLC d/b/a Hippie Runner v. Tulip Trading Company
Claim Number: FA1701001714500
Complainant is Tytenz Sports, LLC d/b/a Hippie Runner (“Complainant”), represented by Michael C. Cerrati of Belzer PC, Georgia, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hippierunners.com>, registered with Key-Systems GmbH.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2017; the Forum received payment on January 27, 2017.
On January 30, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <hippierunners.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2017 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@hippierunners.com. Also on February 2, 2017, 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 March 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant, Tytenz Sports, LLC d/b/a Hippie Runner, is a manufacturer and seller of nylon-spandex blend sports headbands and running belts, as well as jewelry, backpacks and related accessories. In connection with this business, Complainant uses the HIPPIE RUNNER mark to market and sell its goods. Complainant has rights to the HIPPIE RUNNER mark based upon it filing with the United States Patent and Trademark Office
(“USPTO”) (Ser. No. 87122835, filed Aug 1, 2016, published for opposition Jan. 3, 2017). See Compl., at Attached Annex 3. Complainant also relies on common law rights in the mark, dating back to its first use in commerce on October 21, 2007. Respondent’s <hippierunners.com> is confusingly similar to Complainant’s HIPPIE RUNNER mark, as the disputed domain name contains the mark in its entirety, merely omitting the space in the mark, and adding the letter “s” and generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <hippierunners.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the HIPPIE RUNNER mark in any capacity. 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. Rather, the disputed domain name resolves to a website featuring links to the commercial websites of Complainant’s competitors.
3. Respondent has registered and used the disputed domain name in bad faith. Respondent has been a party to multiple adverse UDRP findings, suggesting a pattern of bad faith registration and use. Also, Respondent’s use of <hippierunners.com> to display links to websites which compete with Complainant’s business demonstrates Respondent’s bad faith. Further, Respondent had actual or constructive knowledge of Complainant and Complainant’s rights in the HIPPIE RUNNER mark at the time it registered and subsequently used the disputed domain name. Finally, Respondent is engaged in typosquatting, which is evidence in itself of bad faith registration and use.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <hippierunners.com> domain name is confusingly similar to Complainant’s HIPPIE RUNNER mark.
2. Respondent does not have any rights or legitimate interests in the <hippierunners.com> domain name.
3. Respondent registered or used the <hippierunners.com> 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 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 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 (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.”).
Since the <hippierunners.com> domain name was created before Complainant’s USPTO filing date, Complainant’s rights in the HIPPIE RUNNER mark are based in common law for the purposes of Policy ¶ 4(a)(i). Complainant claims common law rights in the mark dating back to the first use of the mark in commerce on October 21, 2007. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant states that it has continuously used the HIPPIE RUNNER mark since that date in affiliation with its on-line store at <hippierunner.com>, and across a number of Internet websites, social media platforms, and at fitness events and expositions across the United States. See Compl., at Attached Annex 4. Traditionally, a secondary meaning is also established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant points to positive third-party reviews and videos, and to the fact that the first three pages of search results on <google.com> relate to Complainant as evidence of a secondary meaning in its mark. See Compl., at Attached Annex 5. Complainant also claims gross revenue of over $5 million in 2016. See Compl., at ¶ iii. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights by showing the HIPPIE RUNNER mark has taken on a secondary meaning in association with Complainant’s business.
Complainant next claims that Respondent’s <hippierunners.com> is identical or confusingly similar to the HIPPIE RUNNER mark, as the disputed domain name contains the mark in its entirety, merely omitting the space, pluralizing the mark, and adding the gTLD “.com.” Omission of a space in a mark and addition of a gTLD are irrelevant for the purposes of Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Additionally, the addition of the letter “s” to the end of a mark to pluralize it does not distinguish a domain name from the mark in a Policy ¶ 4(a)(i) analysis for confusing similarity. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). The Panel therefore finds that the disputed domain name is confusingly similar to the HIPPIE RUNNER mark pursuant to 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <hippierunners.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the HIPPIE RUNNER mark in any capacity. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl., at Attached Annex 1 (listing “On behalf of hippierunners.com OWNER” with “”c/o WhoisPrivacy.com” as registrant name). As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Tulip Trading Company.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <hippierunners.com> is evinced by their failure to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website consisting of links to the commercial websites of Complainant’s competitors. See Compl., at Attached Annexes 9, 11. Use of a disputed domain name to link to a
complainant’s competitors is not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). The Panel therefore finds that Respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii) for its failure to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant contends that Respondent’s history of adverse UDRP findings suggests that Respondent’s registration of <hippierunners.com> is part of a pattern of bad faith registration and use. A showing of a respondent’s history of bad faith registrations under the UDRP can be evidence of such a pattern. See State Farm Mutual Automobile Insurance Company v. Tulip Company / Tulip Trading Company, FA 1681653 (Forum Aug. 2, 2016) (finding Respondent “Tulip Trading Company” registered the <statefarmfireclaims.com> domain name in bad faith, in part based on a finding that Respondent has been involved in a pattern of bad faith registrations under Policy ¶ 4(b)(ii)). Complainant points to a list of multiple adverse UDRP decisions involving Respondent (e.g. Dollar Bank, Federal Savings Bank v. Dollarabank.com Owner, c/o whoisproxy.com Ltd. / Tulip Trading Co., D2016-0699 (WIPO May 17, 2016)) See Compl., at ¶ xxix. The Panel therefore finds that <hippierunners.com> was registered in bad faith as part of a pattern of bad faith registrations per Policy ¶ 4(b)(ii).
Complainant next contends that Respondent’s use of the disputed domain name amounts to an attempt to confuse Internet users and divert them to Respondent’s own website for commercial gain through it use of the resolving website to feature links to Complainant’s competitors. Use of a confusingly similar domain name and its resolving website to link to competitors of a complainant can be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls that the disputed domain name resolves to a webpage consisting of links to competitors of Complainant, and presumably profits from click-through fees. See Compl., at Attached Annexes, 9, 11. The Panel therefore finds Respondent to have registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also argues that in light of the fame and notoriety of Complainant's HIPPIE RUNNER mark, it is inconceivable that Respondent could have registered the <hippierunners.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, Complainant argues that Respondent’s registration of the <hippierunners.com> domain name, which merely pluralizes Complainant’s HIPPIE RUNNER mark and legitimate <hippierunner.com> domain name to take advantage of Internet users’ typographical errors. A deliberate misspelling such as the addition of a single letter to a mark can be classified as typosquatting and be evidence of bad faith per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum April 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”); see also The Hackett Group, Inc. v. Brian Herns / The Hackett Group, FA1412001597465 (Forum February 6, 2015) (holding that the respondent’s incorporation of the complainant’s entire mark with only the addition of the letter ‘s’ indicated that the respondent had engaged in typosquatting). The Panel notes that the disputed domain name differs from Complainant’s legitimate website <hippierunner.com> only by the addition of the letter “s.” See Compl., at Attached Annex 4. The Panel therefore finds Respondent to have engaged in typosquatting in bad faith per 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 <hippierunners.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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