LINE Friends Corp. v. Anh Duong
Claim Number: FA1803001776133
Complainant is LINE Friends Corp. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Anh Duong (“Respondent”), represented by Craig Maravich of Sommer Law Group, P.C., Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <linefriendscafe.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2018; the Forum received payment on March 15, 2018.
On March 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <linefriendscafe.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 March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 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@linefriendscafe.com. Also on March 26, 2018, 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 April 16, 2018.
Complainant’s Additional Submission was received on April 20, 2018, which was timely.
Respondent’s Additional Submission was received on April 25, 2018, which was also timely.
On April 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) In 2011, Complainant, LINE Friends Corp., launched a successful software application for instant communication on electronic devices called LINE. By 2015, the LINE application had over 600 million users, and it became the most popular messaging application in Japan. LINE Friends is a global character brand originating through sticker characters offered through the messaging application that could be shared with other platform users. LINE Friends characters are Asia’s number one character brand. See Compl. Annex 7. Complainant uses its LINE FRIENDS mark to promote its products and services such as dolls and toys, phone cases, clothing, etc. Complainant established rights in the LINE FRIENDS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,797,193, registered Aug. 25, 2015). See Compl. Annex 4. Respondent’s <linefriendscafe.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “cafe” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the <linefriendscafe.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its LINE FRIENDS mark in any fashion. Respondent is also not commonly known by the disputed domain name, as the WHOIS information of record lists “Anh Duong” as the registrant. See Compl. Annex 14. Respondent is not using the <linefriendscafe.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and resolve to a website used to sell counterfeit versions of Complainant’s products. The website also mimics webpages from Complainant’s own <linefriends.com> website and features Complainant’s copyrighted images of its LINE FRIENDS characters.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Further, Respondent uses the disputed domain name to create confusion with Complainant’s mark for Respondent’s commercial gain, and Respondent’s use of a disclaimer does not mitigate confusion. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the LINE FRIENDS mark.
B. Respondent
i) Respondent, Anh Duong, registered the <linefriendscafe.com> domain name on July 1, 2017. Respondent’s <linefriendscafe.com> domain name is not confusingly similar to Complainant’s mark because it does not include capital letters, eliminates the spacing between terms and adds the term “café” and the gTLD “.com” to the LINE FRIENDS mark.
ii) Complainant did not prove that Respondent lacks rights and legitimate interests in the <linefriendscafe.com> domain name and did not establish a prima facie case. Complainant’s mark is made up of the generic terms “Line” and “Friends” and Complainant does not have an exclusive monopoly on the two common English words. Further, Respondent uses the disputed domain name in connection with a legitimate drop-shipping business.
iii) Respondent did not register or use the <linefriendscafe.com> domain name in bad faith. Respondent uses the disputed domain name to resell Complainant’s LINE FRIENDS products. Respondent is also not passing itself off as Complainant because the <linefriendscafe.com> website contains a disclaimer.
C. Additional Submissions
i) Complainant’s Additional Submission
a. Respondent has not provided sufficient evidence to show that its use of the disputed domain name is bona fide. Respondent has failed to show that it is using the website to sell only authentic LINE Friends trademarked goods. Even if the Respondent was legitimately selling authentic LINE Friends goods, that does not mean that it can use the LINE FRIENDS mark within a domain name.
b. The website of the disputed domain name uses LINE Friends’ copyrighted images and mimics the character information found on LINE Friends’ official website. The miniscule disclaimer, which is barely visible in Respondent’s Annex 9, and is the last thing a website visitor would see on a page (if he or she even scrolled to the bottom), cannot possibly serve to mitigate any consumer confusion or bad-faith use and registration in this case. Even if Respondent’s disclaimer was prominent, panels have held that a disclaimer alone is not enough to satisfy this requirement.
c. Respondent has not rebutted LINE Friends’ prima facie evidence of bad-faith use and registration. As set out in the Amended Complaint, the LINE application launched in 2011, and by 2015 the LINE Friends character brand had become extremely popular in Asia.
ii) Respondent’s Additional Submission
a. Respondent raised the issue that this Panel lacks jurisdiction because Complainant fails to allege cybersquatting and only avers a legitimate business dispute. It has long been held that the UDRP only addresses abusive cybersquatting and not legitimate business disputes.
b. A complainant has the burden to demonstrate all requirements of its prima facie case before any burden shifts to a respondent. Complainant failed to demonstrate that: (1) the disputed domain name was identical or confusingly similar to the Complainant's mark; (2) the complainant did not establish that the domain name was registered and being used in bad faith; and (3) Complainant fails to submit any statements, sworn or unsworn, in support of its allegations. No one from Complainant signed the amended Complaint nor Complainant’s Additional Submission.
c. Respondent demonstrates that it made preparations to use and registered the disputed domain name in connection with a bona fide offering of goods before any notice of this dispute. Respondent registered the disputed domain name <linefriendscafe.com> on July 1, 2017 and began preparations fourteen weeks prior. (Respondent’s Response, p.10; Response Annex 10). Respondent’s registration of the disputed domain name occurred prior to Complainant established a presence in the United States with its first store (and no café). (Respondent’s Response, p.10). Respondent did not receive notice of any dispute until after it registered the disputed domain name offering goods, after Complainant subsequently established a presence in the United States, and not until notice of this dispute.
d. Respondent demonstrated that it has been commonly known by the disputed domain name <linefriendscafe.com>, even if it has not acquired a trademark or service mark. (Respondent’s Response, p. 6; Response Annex 8). For fourteen weeks prior to July 1, 2017, Respondent was commonly known by the disputed domain name as it established and launched the drop-shipping site under the disputed domain name. (Respondent’s Response, p. 6-7; Response Annex 8 & 10). Complainant has not demonstrated that it has a mark in LINE FRIENDS CAFÉ or that it had any related presence in the United States prior to Respondent's launching its website and being commonly known by the disputed domain name.
e. Respondent demonstrated it is making a legitimate, fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent established a drop-shipping business at the disputed domain name with intent for commercial gain but with no intent to misleadingly divert consumers or to tarnish the mark. (Respondent’s Response, p. 3-4, 6, 9; Response Annex 8, 9, 10). The disputed domain name site expressly states through a disclaimer that Respondent is not affiliated, employed or compensated by Complainant showing no intent by Respondent to mislead or divert consumers nor tarnish the mark. (Respondent’s Response, p. 9; Annex 9). Complainant supplies no evidence of Respondent’s intent, and certainly fails to provide evidence that Respondent has intent to misleadingly divert consumers or to tarnish the service mark at issue. Respondent provided invoices for the sale of goods. (Respondent’s Response Annex 11; Respondent’s Additional Response Annex 1). Respondent demonstrates that it sells trademarked goods through its drop-shipping model and that it takes steps to remove anything it finds to be counterfeit. (Respondent’s Response, p. 10; Annex 11). Respondent does not knowingly sell counterfeit goods, and if Respondent learns of counterfeit goods identified on its website, the counterfeit goods are removed. (Respondent’s Response, p.10) Additionally, Respondent buys from suppliers through <aliexpress.com> which is owed by the Alibaba Group that has a policy and buyer protection plan designed to protect from trademark infringement and counterfeit goods. (Respondent’s Additional Response Annex 2). Respondent demonstrates that it takes steps to prevent confusion by making clear that it is not the mark owner and disclosing that it does not have a relationship with the mark owner. (Respondent’s Response, p.9; Annex 9) “Line Friends Café in no way [is] affiliated with Line Corp. nor am I employed by them or compensated by them to publish content on this site.” (Respondent’s Response, p.9; Annex 9).
f. Complainant does not argue: (1) Notice; (2) Commonly Known; or
Intent. Respondent’s defenses fall under the conjunction “or” not “and.” Even though Respondent did not have to demonstrate all three defenses, Respondent did.
g. Respondent demonstrates that it does not corner the market nor prevent the trademark owner from reflecting its own mark in the disputed domain name, and Complainant does not challenge this. Because the words are generic, common English words, Respondent can use them. Complainant fails to demonstrate Respondent had intent to register the disputed domain name in bad faith; instead, Complainant relies on “constructive knowledge” in an attempt to meet its burden.
i) The Panel has jurisdiction on the UDRP merits of the Complaint.
ii) Complainant's LINE Friends is a global character brand originating through sticker characters offered through the messaging application that could be shared with other platform users. LINE Friends characters are very popular character brand.
iii) Complainant established rights in its LINE FRIENDS mark through its registration with the USPTO (e.g., Reg. No. 4,797,193, registered Aug. 25, 2015).
iv) Respondent registered the disputed domain name on July 1, 2017.
v) The WHOIS information of record for the disputed domain name lists “Anh Duong” as the registrant.
vi) The website of the disputed domain name displayed a disclaimer “Line Friends Café in no way [is] affiliated with Line Corp. nor am I employed by them or compensated by them to publish content on this site.”
vii) The website of the disputed domain name displayed counterfeit versions of Complainant’s products for sale and images of Complainant’s LINE FRIENDS characters and features pages copied from Complainant’s own legitimate <linefriends.com> domain name.
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."
Preliminary Issue: Jurisdiction
Respondent raised the issue that this Panel lacks jurisdiction because Complainant fails to allege cybersquatting and only avers a legitimate business dispute. However, the Panel finds that the Complaint is grounded on the thresholds of the relevant provisions of UDRP, and thus it has jurisdiction on the UDRP merits.
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.
Complainant contends it established rights in its LINE FRIENDS mark through registration with the USPTO (e.g., Reg. No. 4,797,193, registered Aug. 25, 2015). See Compl. Annex 4. Registration of a mark with a trademark authority, such as the USPTO, confers rights in the mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant established rights in the LINE FRIENDS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <linefriendscafe.com> domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “cafe” and the gTLD “.com” to the fully-incorporated mark. The addition of a generic term and a gTLD may not sufficiently differentiate a disputed domain name from a mark in a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Accordingly, the Panel holds that Respondent’s <linefriendscafe.com> domain name is confusingly similar to Complainant’s mark.
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its LINE FRIENDS mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to further support a finding that a respondent is not commonly known by a disputed domain name. 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)). The WHOIS information of record for <linefriendscafe.com> lists “Anh Duong” as the registrant.
Further, Complainant argues that Respondent is not using the <linefriendscafe.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain name to pass off as Complainant. Use of a domain name to pass off as a complainant may not be considered a bona fide offering or fair use under Policy ¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant alleges that screenshots of the <linefriendscafe.com> website indicate that the site displays counterfeit versions of Complainant’s products for sale and copyrighted images of Complainant’s LINE FRIENDS characters and features entire pages copied from Complainant’s own legitimate <linefriends.com> domain name. Compare Compl. Annexes 7-9; 11 (Screenshots of Complainant’s website) with Annexes 15-17, 20.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that Complainant’s mark is made up of the generic terms “Line” and “Friends” and Complainant does not have an exclusive monopoly on the two common English words. However, the Panel is of the view that the combination of two words “Line” and “Friends” is not necessarily generic in relation to the Complainant’s goods as covered by its trademark registrations in the US and other jurisdictions.
Respondent claims that it has been commonly known by the disputed domain name <linefriendscafe.com>, even if it has not acquired a trademark or service mark (Respondent’s Response, p. 6; Response Annex 8). It contends that for fourteen weeks prior to July 1, 2017 when the disputed domain name was registered, it had established and launched the drop-shipping site under the disputed domain name. (Respondent’s Response, p. 6-7; Response Annex 8 & 10). However, the Panel finds that mere fact of establishing and launching the drop-shipping site without evidence of the substantive use of the disputed domain name in trade is insufficient to recognize that it has been commonly known by the disputed domain name <linefriendscafe.com>.
Respondent further avers that it uses the disputed domain name in connection with a legitimate drop-shipping business. Respondent argues that it uses the disputed domain name to resell Complainant’s LINE FRIENDS products. Respondent additionally argues that it is also not passing itself off as Complainant because the <linefriendscafe.com> website contains a disclaimer “Line Friends Café in no way [is] affiliated with Line Corp. nor am I employed by them or compensated by them to publish content on this site.”
The Panel notes that according to WIPO Jurisprudential Overview 3.0 (¶ 2.8.1), panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Respondent contends that i) it sells trademarked goods through its drop-shipping model and that it takes steps to remove anything it finds to be counterfeit. (Respondent’s Response, p. 10; Annex 11); ii) it does not knowingly sell counterfeit goods, and if it learns of counterfeit goods identified on its website, the counterfeit goods are removed. (Respondent’s Response, p.10); iii) it buys from suppliers through <aliexpress.com> which is owned by the Alibaba Group that has a policy and buyer protection plan designed to protect from trademark infringement and counterfeit goods (Respondent’s Additional Response Annex 2); and iv) it takes steps to prevent confusion by making clear that it is not the mark owner and disclosing that it does not have a relationship with the mark owner.
Against Respondent’s arguments above, Complainant rebuts that i) notwithstanding Respondent’s assertion, Respondent did not provide any information regarding its efforts to identify counterfeit products or how it learns that items are counterfeit; ii) whatever these removal efforts are, if any, they are futile because the disputed domain name is still replete with counterfeit LINE Friends goods even after Respondent was notified by this Complaint of over a dozen representative counterfeit goods on her website (Complainant’s Annex 15); iii) there are LINE FRIENDS items that are clearly counterfeit because Complainant does not make the products shown examples of which are shown at Complainant’s Annex 16; iv) there are items that look like authentic LINE FRIENDS items, but, upon visual inspection, the items appear to be counterfeit rather than genuine goods examples of which are shown at Complainant’s Annex 17; v) the “Learn More” link of the disputed domain name website redirects to a page titled “Wondering About Line Friends” and has copyrighted images of each LINE FRIENDS character with supposed information about the character’s personality (Complainant’s Annex 20); vi) the information, which appears alongside infringing images, appears in a definitive reference format, mimicking Complainant's official “Wondering about LINE Friends” page, not a commentary format that might appear on a non- commercial fan site (Complainant’s Annexes 8 and 20); and vii) Respondent has not provided a shred of evidence, not even a single invoice, to show that any of the goods sold on the website are authentic LINE FRIENDS products first purchased from LINE FRIENDS or an authorized reseller.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”; some panels have also expressed this as an “on balance” standard. Under this standard, the Panel finds, given exhibits submitted by Complainant and Respondent that it is more likely that Complainant’s claimed fact rather than Respondent’s one is true. See ¶4.2 of WIPO Jurisprudential Overview 3.0. Therefore, the Panel concludes that Respondent has not provided sufficient evidence regarding its alleged claim to resell only Complainant’s authentic products. In virtue of the Oki Data test, the Panel finds that Respondent failed to establish the second element of the Oki Data test, i.e., ‘the respondent must use the site to sell only the trademarked goods or services.’
While Respondent argues that it is using the disputed domain name for legitimate purposes because it displayed a disclaimer on the <linefriendscafe.com> website, the Panel notes that a disclaimer may not mitigate confusion between a mark and the domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, FA 1724063 (Forum May 9, 2017) (finding respondent’s disclaimer insufficient because “[t]he disclaimer is in small print, although it can be read, and it is in a position at the bottom of each page where it may well be overlooked and in any event it comes after the services offered on each page of the site… [t]he result is that each page starts with Complainant’s unique stylized trademark and ends with a less than prominent or effective disclaimer.”).
As such, the Panel finds that Respondent is not using the <linefriendscafe.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
As Respondent failed to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith by diverting Internet users to Respondent’s competing website and disrupting Complainant’s business. Use of a domain name to disrupt a complainant’s business may evidence bad faith. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). The Panel agrees that Respondent is using the <linefriendscafe.com> domain name to resolve to a competing website. See Compl. Annex 15-17, 20. Therefore, the Panel finds that Respondent used the disputed domain name to disrupt Complainant’s business and holds that Respondent registered and used the disputed domain name in bad faith.
Further, Complainant argues that Respondent is using the disputed domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith use pursuant to Policy ¶ 4(b)(iv).. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). As previously stated, Complainant alleges that screenshots of the <linefriendscafe.com> website indicate that Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products. See Compl. Annexes 15-17, 20. Respondent argues that it is using the disputed domain name for legitimate purposes because it displayed a disclaimer on the <linefriendscafe.com> website. However, as mentioned above, use of a disclaimer may not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Auxilium Pharm., Inc. v. Patel, FA 642141 (Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Therefore, the Panel holds that the disclaimer does not mitigate Respondent’s bad faith registration and use. Accordingly, the Panel concludes that Respondent is using the disputed domain name to create confusion between the mark and the disputed domain name for commercial gain and holds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the LINE FRIENDS mark because Respondent used the disputed domain name to sell counterfeit versions of Complainant’s products. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Name Privacy Protection, FA 1732901 (Forum June 29, 2017) (“Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶4(a)(iii)”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). In light of the notoriety of Complainant's mark and the manner of use of the disputed domain name in a way of passing Respondent off as Complainant, the Panel infers that Respondent had knowledge of Complainant’s rights in the LINE FRIENDS mark and holds that Respondent engaged in Policy ¶4(a)(iii) bad faith registration.
Reverse Domain Name Hijacking
Respondent claims that Complainant has engaged in reverse domain name hijacking. As the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), it finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <linefriendscafe.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 3, 2018
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