DECISION
Dentsu International Limited and 360i LLC v. Samir Kazi / Gadget Bucket
Claim Number: FA2310002067650
PARTIES
Complainants are Dentsu International Limited and 360i LLC ("Complainants"), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America. Respondent is Samir Kazi / Gadget Bucket ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <360iagency.com>, registered with BigRock Solutions Ltd.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainants submitted a Complaint to Forum electronically on October 24, 2023. Forum received payment on October 24, 2023.
On October 24, 2023, BigRock Solutions Ltd confirmed by e-mail to Forum that the <360iagency.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@360iagency.com. Also on October 25, 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 November 15, 2023, pursuant to Complainants' request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainants request that the domain name be transferred from Respondent to Complainants.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."
Complainant 360i LLC is the owner of the trademark registrations relevant to this proceeding. Complainant 360i LLC is a wholly owned subsidiary of Complainant Dentsu International Limited.
The Panel accepts that the parent/subsidiary relationship between Complainants constitutes a sufficient nexus or link such that each may claim to have rights to the <360iagency.com> domain name listed in the Complaint.
PARTIES' CONTENTIONS
A. Complainants
Complainant Dentsu International Limited is a multinational media and digital marketing communications company. Complainant 360i LLC was founded in 1998 as a search engine marketing agency and technology company for online brands. Starting in 2005, it expanded its services to include a social media practice and became a "go-to" shop for digital-centric marketing, with strategy, media and creative capabilities. 360i LLC spends millions of dollars each year to advertise and promote its products and services around the world. Its <360i.com> domain name has been advertising its products and services online since at least as early as 2005. In 2013, 360i LLC opened offices in London, Toronto and Sao Paulo, expanding its reach globally. Its clients have included some of the world's most famous brands.
Complainant 360i LLC has rights in the mark 360i both at common law and through several registrations, including in the United Kingdom, the United States and the European Union. Respondent's <360iagency.com> domain name is confusingly similar to the 360i mark.
Respondent lacks rights or legitimate interests in the <360iagency.com> domain name since Respondent is not licensed or authorized to use Complainant's 360i mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name for a website that directly competes with Complainants, offering branding and media services.
Given Complainants' long-standing and well-publicized use of the 360i mark, Respondent knew of Complainants' 360i mark when registering the domain name. Respondent intentionally selected, registered, and is using the domain name in bad faith to attract Internet users to its website for commercial gain by engendering confusion and mistake with 360i LLC and its 360i mark and name as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent's services. Respondent's website increases the confusion by incorporating the 360i mark on its website. Further, Respondent exploits the confusion with Complainants' mark to offer services that directly compete with those of Complainants.
Respondent's bad faith is further demonstrated by its disruption of Complainants' business through use of the domain name to offer competing services; failure to respond to Complainants' demand letter; and false WHOIS contact information.
B. Respondent
Respondent Sameer Kazi failed to submit a Response in this proceeding. However, in informal correspondence with Forum and with Complainants' representative, which the Panel has taken into consideration, Taskeen Naik stated, in summary, that she is the proprietor of the business and sought assistance from Sameer Kazi to register the domain name for her; she was unaware of any trademark registration associated with the domain name; she has been using the domain name since 2021 and deeply regrets any unintentional infringement that may have occurred; she officially registered her business as "360iagency" rather than just "360i," and has been operating under this name for the past four years; both the Indian and Dubai governments approved her business name registration, indicating that she has conducted her business in a legally compliant manner in both countries; she understands the concerns related to her use of the domain name and is willing to relinquish it but if she were to do so, she would incur rebranding expenses that she cannot afford, so will do so only if Complainants will cover those expenses.
C. Complainants' Additional Submission
In response to Taskeen Naik's informal correspondence with Forum, Complainants submitted an Additional Submission, together with copies of correspondence between Taskeen Naik and Complainants' representative mentioned above. The Panel finds it unnecessary to consider Complainants' Additional Submission other than insofar as it exhibited that correspondence.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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 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 as 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').
Identical and/or Confusingly Similar
Complainants have shown that Complainant 360i LLC has rights in the 360i mark through numerous registrations, including in the United Kingdom (e.g., Reg. No. UK00915140081, registered on July 28, 2016). The Panel finds Respondent's <360iagency.com> domain name to be confusingly similar to the 360i mark, only differing by the addition of the word "agency", which is insufficient to distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainants have established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <360iagency.com> domain name was registered on April 23, 2020, many years after Complainants have shown that the 360i mark had become very well-known worldwide. It resolves to a website with the same color, look and feel of Complainants' website at "www.360i.com", displaying on each page the 360i mark, followed by the word "Agency", separated by a space from the 360i mark. The branding and media services offered on the website directly compete with those of Complainants.
These circumstances, together with Complainants' assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <360iagency.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent Sameer Kazi has made no attempt to do so and the Panel does not accept Taskeen Naik's informal correspondence as showing that she has rights or legitimate interests in the <360iagency.com> domain name, for the following reasons:
(i) she has produced no evidence to show that her registered business name is 360iagency, nor that her business was commonly known by that name or by the <360iagency.com> domain name prior to the registration of the domain name;
(ii) use of the domain name to resolve to a website with the look and feel of Complainants' website to offer competing services is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert Complainants' customers.
Accordingly, the Panel finds that neither Respondent nor Taskeen Naik have rights or legitimate interests in respect of the domain name.
Complainants have established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Taskeen Naik, on whose behalf Respondent Sameer Kazi registered the domain name, was fully aware of Complainant 360i LLC's 360i mark when Respondent registered the <360iagency.com> domain name and that, by copying the look and feel of Complainants' website, Taskeen Naik has intentionally attempted to attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the 360i mark as to the source of her website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainants have established this element.
DECISION
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <360iagency.com> domain name be TRANSFERRED from Respondent to Complainant 360i LLC.
Alan L. Limbury, Panelist
Dated: November 21, 2023.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page