Phusion Projects, LLC v. Paul Richards / Armstrong Air & Heating
Claim Number: FA1912001873847
Complainant is Phusion Projects, LLC (“Complainant”), represented by Goldberg Kohn Ltd., Illinois, USA. Respondent is Paul Richards / Armstrong Air & Heating (“Respondent”), represented by Victor Chapman of Barrett, Chapman & Ruta, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fourlokolawsuit.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 5, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fourlokolawsuit.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 December 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2019 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@fourlokolawsuit.com. Also on December 9, 2019, 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 January 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant uses the FOUR LOKO mark in connection with alcoholic beverages and clothing. Complainant has rights in the FOUR LOKO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,428,131, registered Nov. 5, 2013). Respondent’s <fourlokolawsuit.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly encompasses Complainant’s mark and adds only the wording “lawsuit.”
Respondent lacks rights or legitimate interests in the <fourlokolawsuit.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent does not use the disputed domain name to resolve to any active website.
Respondent registered and uses the <fourlokolawsuit.com> domain name in bad faith. Respondent fails to make any active use of the disputed domain name. Given the fame, notoriety, and distinctiveness of the FOUR LOKO mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <fourlokolawsuit.com> domain name on Oct. 4, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the FOUR LOKO mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its trademark registrations for the FOUR LOKO mark (e.g. Reg. No. 4,428,131, registered Nov. 5, 2013). Accordingly, the Panel finds that Complainant has established rights in the FOUR LOKO mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fourlokolawsuit.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly encompasses Complainant’s mark and adds only the wording “lawsuit.” The addition of a generic or descriptive term fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <fourlokolawsuit.com> domain name is confusingly similar to the FOUR LOKO mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <fourlokolawsuit.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Paul Richards/Armstrong Air & Heating,” a heating and air conditioning company in Florida, USA. Furthermore, there is no evidence to suggest that Respondent was authorized to use the FORU LOKO mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <fourlokolawsuit.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent does not use the disputed domain name to resolve to any active website. The inactive holding of a disputed domain name may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See also Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which fails to resolve to a webpage and displays an error message. The Panel therefore finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <fourlokolawsuit.com> domain name in bad faith as Respondent fails to make any active use of the disputed domain name. Passive holding of a disputed domain name can show bad faith registration and use per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which fails to resolve to a webpage and displays an error message. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends Respondent registered and uses the <fourlokolawsuit.com> domain name in bad faith because Respondent had knowledge of Complainant’s rights in the mark at the time of registration. The Panel finds that Respondents’ inclusion of the entire mark in its domain name evidences that Respondent had actual knowledge of Complainant’s rights in the FOUR LOKO mark at the time of registration. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <fourlokolawsuit.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 10, 2020
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