DECISION

 

Sun Weddings, LLC v. Sunan Kalisongo

Claim Number: FA2311002070389

 

PARTIES

Complainant is Sun Weddings, LLC ("Complainant"), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA. Respondent is Sunan Kalisongo ("Respondent"), Cambodia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <floridasunweddings.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 9, 2023; Forum received payment on November 9, 2023.

 

On November 9, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <floridasunweddings.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 November 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 1, 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@floridasunweddings.com. Also on November 10, 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 December 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, since 1997, Sigrid Gebel, the Founder and Manager of Complainant, has been planning destination weddings in Florida under the SUN WEDDINGS trademark. Later, Sigrid's son, Mark Gebel, and daughter, Tina Gebel, both joined the business. Complainant plans and executes up to roughly 150 weddings per year. Complainant registered the disputed domain name on its original creation date back in May 2003, and used it ever since to market its beach wedding services. In 2015, Complainant started using the FLORIDA SUN WEDDINGS trademark, and has used it consistently ever since, in connection with thousands of weddings. Over the years, Complainant has generated millions of dollars in revenues, and has spent tens of thousands of dollars on advertising their wedding services to customers across the United States and around the world, resulting in significant recognition by both media and customers. Starting with the launch of the website at the disputed domain name twenty (20) years ago, prospective brides and grooms learned of Complainant's services by visiting the site at the disputed domain name – this inexplicably ended when the disputed domain  was transferred from Complainant's GoDaddy account on October 5, 2023, without Complainant's authorization, and sold on Afternic. Despite renewing the disputed domain name with GoDaddy in May 2023 for two years, Complainant's domain name was hijacked and auctioned for $300, with GoDaddy refusing to prevent the fraudulent transfer. The disputed domain name is now being used to host a foreign language gambling site, which has nothing to do with destination weddings in Florida. Complainant has no idea how its GoDaddy account was compromised, and who is responsible for the hijacking of the disputed domain name. Complainant never received notification from GoDaddy that the disputed domain name was either being listed for sale, sold, or transferred. All of Complainant's efforts to fix this matter directly with GoDaddy failed. Complainant claims common law rights in the mark FLORIDA SUN WEDDINGS dating back to 2015.

 

Complainant alleges that the disputed domain name is identical or confusingly similar to its FLORIDA SUN WEDDINGS mark, as it incorporates the mark in its entirety and merely adds the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position.

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, Complainant is not associated with Respondent, and has not authorized, licensed, or otherwise given permission for Respondent to use its mark. Respondent hijacked the disputed domain name in an inexplicable manner. There is also no offering of a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name because it resolves to a website that offers gambling services. Complainant cites UDRP precedents to support its position.

 

Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent hijacked the disputed domain name. The disputed domain name is used to disrupt Complainant's business by diverting customers and offering gambling services for commercial gain. Respondent had actual knowledge of Complainant's trademark rights in the FLORIDA SUN WEDDINGS mark. Respondent used a privacy service. The WHOIS information is false. Complainant cites UDRP precedents to support its position.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns common law rights in the mark FLORIDA SUN WEDDINGS and uses it to provide wedding services.

 

The disputed domain name was registered in 2023.

 

Complainant's rights in its mark precede the registration of the disputed domain name.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Complainant used the disputed domain name to promote its services from 2003 through 2023. Complainant renewed the registration of the disputed domain name in 2023. In an inexplicable manner, Respondent hijacked the disputed domain name. The disputed domain name now resolves to a website that offers gambling services. The WHOIS information is false.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in its FLORIDA SUN WEDDINGS mark. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. 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 registered the disputed domain name in 2003, and used it to market its wedding services well before the registration of the disputed domain name. Complainant presents evidence showing that it used its FLORIDA SUN WEDDINGS mark in various promotional and advertising materials, obtaining customer and media recognition. Therefore the Panel finds that Complainant established common law rights in its FLORIDA SUN WEDDINGS mark, with rights predating Respondent's registration of the disputed domain name.

 

The disputed domain name incorporates Complainant's FLORIDA SUN WEDDINGS mark in its entirety and merely adds the ".com" generic top-level domain ("gTLD"). This does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs"); see also Abbott Labs v. Whois Svc., FA 1254682 (Forum May 14, 2009) ("the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark"); see also Twitter, Inc. v. Jie, FA 1919786 (Forum Dec. 9, 2020) ("The Panel considers the disputed domain name [<twitter.luxe>] to be identical to Complainant's registered [TWITTER] trademark"). Thus the Panel finds that the disputed domain name is identical to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as "Sunan Kalisongo". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

The disputed domain name resolves to a website that offers gambling services. Previous Panels have found that this is not a bona fide or legitimate noncommercial or fair use of a disputed domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (Respondent's domain name "resolves to a Chinese-language website advertising games or gambling.); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) ("Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent's unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii)."). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Complainant does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, Complainant provides evidence showing that the disputed domain name was hijacked: its registration had been renewed by Complainant, but GoDaddy inexplicably transferred it to Respondent. Hijacking a domain name is clearly an instance of bad faith registration and use under Policy ¶ 4(a)(iii). See by analogy Barbara Kingsolver v. Kingsolver Computer Solutions, FA 1313077 (Forum Apr. 15, 2010) ("The Panel finds that Complainant's prior registration of the disputed domain name is evidence that Respondent's subsequent registration of the disputed domain name constituted bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Edwin Company, Limited v. Fiorucci Furniture, FA 393032 (Forum Feb. 22, 2005) ("Finding that Respondent did not offer any evidence to the contrary, the Panel determines that Respondent's registration due to Complainant's oversight is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."). Thus the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).

 

Further, as already noted, the disputed domain name resolves to a website that offers gambling services. This too is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Oki Electric Industry Co., Ltd. v. Elizabeth Dobson, FA 1989201 (Forum May. 2, 2022) ("the Panel determines that the disputed domain name's deceptive redirection of internet users to Respondent's website, which offers links to online gambling websites, is deliberately designed for Respondent's commercial gain.  Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv)."); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant's mark, to a gambling website); see also Qwest Comm'ns Int'l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) ("Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent's attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv)."). Thus the Panel finds bad faith use and registration under Policy ¶ 4(b)(iv).

 

Finally, the WHOIS information for the disputed domain name is:

Registrant Name: Sunan Kalisongo
Registrant Organization:
Registrant Street: Phnom Penh
Registrant City: Phnom Penh
Registrant State/Province: Phnom Penh
Registrant Postal Code: 14000
Registrant Country: KH
Registrant Phone: +855.11692982

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

The address provided in the WHOIS is obviously not a valid address, and, from publicly available databases, the Panel has found that the postal code for Phnom Penh starts with "12", not "14".

 

Thus the WHOIS information is false. This can indicate bad faith registration and use. See Enterprise Holdings, Inc. v. John Doe, FA 1339545 (Forum Sept., 2010 ) ("The Panel also takes into account that the entity that Responded to the Complaint would not be the registrant of the disputed domain names for the instant proceedings. Therefore, that circumstance is also taken by the Panel as indication of bad faith under Policy ¶ 4(a)(iii) by providing false or misleading WHOIS information to the registrar."); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Accordingly, the Panel finds bad faith registration and use on this ground also.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <floridasunweddings.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: December 3, 2023