Xtreme Hiit LLC v. eray harun
Claim Number: FA2302002032272
Complainant is Xtreme Hiit LLC (“Complainant”), represented by Sharoni S. Finkelstein, California, USA. Respondent is eray harun (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xbyshakiemevans.com>, registered with Dynadot, 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 16, 2023; Forum received payment on February 16, 2023.
On February 16, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <xbyshakiemevans.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 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@xbyshakiemevans.com. Also on February 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions.
Complainant, Xtreme HIIT LLC, is a fitness program provider. Complainant has rights in the X BY SHAKIEM EVANS mark through common law, which is further supported by a trademark application with the United States Patent and Trademark Office (“USPTO”). Respondent’s <xbyshakiemevans.com> domain name is identical to the X BY SHAKIEM EVANS mark as it only adds a generic top-level domain (“gTLD”) to the mark.
Respondent lacks rights or legitimate interests in the <xbyshakiemevans.com> domain name since Respondent is not licensed or authorized to use Complainant’s X BY SHAKIEM EVANS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers the domain name for sale.
Respondent registered and uses the <xbyshakiemevans.com> domain name in bad faith. Respondent offers the disputed domain name for sale for an inflated cost. Respondent also registered the disputed domain name with a privacy service three days after Complainant filed its trademark application for the X BY SHAKIEM EVANS mark. In addition, Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a fitness program provider.
2. Complainant has established its common law rights to the X BY SHAKIEM EVANS mark and that it had acquired those rights at least by 2021.
3. Respondent registered the <xbyshakiemevans.com> domain name on February 17, 2022.
4. Respondent has offered the disputed domain name for sale.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the X BY SHAKIEM EVANS mark through the common law. A registered trademark with a governmental authority is not required to establish rights in a mark if a complainant can demonstrate common law rights. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To show common law rights in a mark, a complainant must demonstrate that the mark has sufficiently acquired secondary meaning, such as through extensive and long use, substantial marketing, and ownership of a domain name. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant points to advertisements of the mark on popular wellness websites, hundered of positive reviews by users, promotion and advertising on social media, and use for fitness since at least 2021. See Compl. Appendix A (Evans Decl.) and Appendix B (social media pages and search results for X BY SHAKIEM EVANS). Complainant also submits that its pending trademark application with the USPTO for the mark supports its common law rights. See Compl. Appendix C (trademark application, Ser. No. 97,265,825, which was filed on February 14, 2022). The Panel finds that Complainant has sufficiently established a secondary meaning in the mark sufficient to show a common law trademark and, therefore, it finds that Complainant has rights in the X BY SHAKIEM EVANS mark through common law and has thus established its standing to file the Complaint.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s X BY SHAKIEM EVANS mark. Complainant argues that the <xbyshakiemevans.com> domain name is identical to its X BY SHAKIEM EVANS mark since it merely adds the “.com” gTLD. When a disputed domain name includes an entire mark and the sole difference is the addition of a gTLD, Panels have found the domain name to be identical to the mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Given that Respondent only adds a gTLD to the X BY SHAKIEM EVANS mark, the Panel finds that the <xbyshakiemevans.com> domain name is identical to Complainant’s X BY SHAKIEM EVANS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s X BY SHAKIEM EVANS mark and to use it in its domain name;
(b) Respondent registered the <xbyshakiemevans.com> domain name on February 17, 2022;
(c) Respondent has offered the disputed domain name for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <xbyshakiemevans.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the X BY SHAKIEM EVANS mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in 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)”); see also Navistar International Corporation v. N Rahmany, FA 1505001620789 (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 WHOIS information for <xbyshakiemevans.com> lists the registrant as “eray harun.” See Registrar Email Verification. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the X BY SHAKIEM EVANS mark; Complainant expressly disclaims ever authorizing Respondent rights to the mark. See Compl. Appendix A, Evans Decl. ¶ 5. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <xbyshakiemevans.com> domain name for any bona fide or legitimate use, but rather offering it for sale. A respondent’s use of a disputed domain name merely to offer it for sale has been held not to constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole, FA 1006001328023 (Forum July 8, 2010) (“The Panel finds that general offers to sell the disputed domain name do not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶¶ 4(c)(i) or 4(c)(iii)”). Complainant provides a screenshot of the resolving site, a parked page offering to sell <xbyshakiemevans.com> for $4,995. See Compl. Appendix E. The Panel therefore finds that Respondent’s offer to sell the disputed domain name shows that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <xbyshakiemevans.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <xbyshakiemevans.com> domain name in bad faith by offering the domain name for sale. A respondent’s offer to sell a disputed domain name may show bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted, Respondent offers the domain name for sale for $4,995. See Compl. Appendix E. The Panel therefore finds bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent’s registration of the <xbyshakiemevans.com> domain name through a privacy service in an effort to conceal its identity evinces bad faith. See Compl. Appendix D. Panels have agreed, finding that use of a privacy service to register a disputed domain name is indicative of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). As the Panel agrees, it finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant notes that Respondent registered the <xbyshakiemevans.com> domain name only three days after Complainant filed its trademark application for the X BY SHAKIEM EVANS mark. Panels have taken into consideration the timing of the registration of a disputed domain name when determining bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA 1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Here, Complainant filed its trademark application on February 14, 2022. See Compl. Appendix C. Respondent registered the <xbyshakiemevans.com> domain name on February 17, 2022. See Compl. Appendix D. As the Panel agrees that registration of the domain name three days after the trademark application was filed demonstrates bad faith, it finds bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant claims that Respondent had constructive and/or actual knowledge of Complainant’s rights in the X BY SHAKIEM EVANS mark when registering <xbyshakiemevans.com>. Prior UDRP decisions have generally declined to find bad faith on the basis of constructive knowledge. The Panel may, however, determine that Respondent had actual knowledge, as actual knowledge is sufficient to show bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). As the Panel finds that Respondent had actual knowledge of Complainant and its trademark application, it finds that Respondent registered and uses the <xbyshakiemevans.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xbyshakiemevans.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 18, 2023
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