Get Weird, LLC v. Muhammad Awais
Claim Number: FA2212002022507
Complainant is Get Weird, LLC (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio. Respondent is Muhammad Awais (“Respondent”), PK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <antisocialsocialclubs.us>, registered with NameCheap, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on December 2, 2022; Forum received payment on paper file date.
On December 02, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <antisocialsocialclubs.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 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@antisocialsocialclubs.us. Also on December 7, 2022, 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 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, Get Weird, LLC, offers streetwear clothing and accessories under the trademark ANTI SOCIAL SOCIAL CLUB. It asserts rights in the mark based upon use in commerce and registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,046,740, registered September 20, 2016); the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 1,097,557, registered April 6, 2021); the European Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 018260581 registered December 1, 2020); and other trademark agencies around the world (through International Trademark Reg. No. 1436026 dated December 22, 2017). Respondent’s <antisocialsocialclubs.us> domain name is confusingly similar to Complainant’s mark because it contains the ANTI SOCIAL SOCIAL CLUB mark in its entirety, merely adding the letter “s” at the end (to form the plural word “clubs”) and the country-code top-level domain (“ccTLD”) “.us” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <antisocialsocialclubs.us> domain name. Respondent is not licensed or authorized to use Complainant’s ANTI SOCIAL SOCIAL CLUB 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. Instead, Respondent uses the disputed domain name to impersonate Complainant and deceive customers by offering a website that looks nearly identical to the legitimate site at www.antisocialsocialclub.com.
Respondent registered or uses the <antisocialsocialclubs.us> domain name in bad faith. Respondent diverts business away from Complainant by deceiving consumers into thinking Respondent is Complainant, or is related to Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ANTI SOCIAL SOCIAL CLUB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has rights in the ANTI SOCIAL SOCIAL CLUB trademark and the <antisocialsocialclubs.us> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name as it seeks to impersonate Complainant and deceive its customers; and
- Respondent both registered and uses the disputed domain name in bad faith where it seeks commercial gain by presenting an impersonation website through confusion caused by the disputed 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."
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 ANTI SOCIAL SOCIAL CLUB mark based upon its registration with the USPTO, the CIPO, the EUIPO, and other trademark agencies around the world. Registration of a mark with multiple trademark agencies is considered a valid showing of rights under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”) Complainant has provided images of its trademark registrations or website screenshots from the above-mentioned agencies and so the Panel finds that Complainant has rights in its claimed mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <antisocialsocialclubs.us> domain name is identical or confusingly similar to Complainant’s ANTI SOCIAL SOCIAL CLUB mark. The addition of a single letter typically does not distinguish a disputed domain name from a mark incorporated therein per Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). Likewise, the addition of a ccTLD is not enough to distinguish the disputed domain name from the mark, and is usually considered irrelevant under a Policy ¶ 4(a)(i) analysis. See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The disputed domain name incorporates the ANTI SOCIAL SOCIAL CLUB mark in its entirety, merely adding a letter “s” at the end of the word “club” as well as the ccTLD “.us”. As these changes still yield a result that is similar under the familiar “sight, sound, and meaning” test, the Panel finds that the <antisocialsocialclubs.us> domain name is confusingly similar to the ANTI SOCIAL SOCIAL CLUB mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 first argues that Respondent does not have rights or legitimate interests in the <antisocialsocialclubs.us> domain name because Respondent is not licensed or authorized to use Complainant’s ANTI SOCIAL SOCIAL CLUB mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information may be used to show that a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). However, such information may also be used to show that no such reputation exists. 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). 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 Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) The WHOIS information for the <antisocialsocialclubs.us> domain name, as stated in the Registrar verification to the Forum, lists the registrant as “Muhammad Awais” and Respondent has not participated in this case to claim that it is known otherwise. Therefore, the Panel has no evidence upon which to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Rather, Respondent uses the <antisocialsocialclubs.us> domain name to pass itself off as Complainant by offering an identical website and deceiving customers. Passing off is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Complainant has provided screenshots of the disputed domain name’s resolving site as well as of Complainant’s official site at www.antisocialsocialclub.com. Respondent’s site displays the ANTI SOCIAL SOCIAL CLUB mark at the top, in the same graphic used by Complainant, followed by a range of apparel items – t-shirts and hoodies – all of which bear the same mark. These are followed by a price that is greyed and crossed out next to a second, lower price, in black text. The site also lists certain categories such as “Best Seller Products”, “Deals of The Day”, and “Special Discount Offer”. Further down the page there is extensive text about the background of Anti Social Social Club, its customer service, and the quality of its products, concluding with the notice “Copyright Anti Social Social Club© 2022”. While the layout of, and product images displayed on Respondent’s website do not appear to be “nearly identical” to Complainant’s page, they certainly do create “the appearance of the website” as claimed in the Complaint and the assertion that it is “seeking to deceive consumers into thinking that Respondent is Complainant” is well-founded. Respondent has not filed a Response nor made any other submission in this case and so it does not contest Complainant’s assertions or offer any alternate explanation for its actions. As Complainant has made a prima facie case that has not be rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(ii) and that it does not make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iv).
Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ANTI SOCIAL SOCIAL CLUB mark. Actual knowledge can provide a solid foundation upon which to build an argument of bad faith registration under Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”) To support this assertion, Complainant points to Respondent specifically copying the stylized design of Complainant’s mark at the <antisocialsocialclubs.us> website. The Panel finds this to be a reasonable and supported assertion and so concludes that Respondent had actual knowledge of Complainant’s rights in its mark at the time that it registered the disputed domain name.
Complainant further argues that Respondent registered and uses the <antisocialsocialclubs.us> domain name in bad faith because Respondent diverts business away from Complainant by deceiving consumers into thinking Respondent is Complainant, or is related to Complainant. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”) The Panel again references the screenshots provided by Complainant which show Respondent’s use of the ANTI SOCIAL SOCIAL CLUB logo, the offering for sale of similar or identical products, and the notice “Copyright Anti Social Social Club© 2022” at the footer of the website. This gives the clear impression that Respondent’s website originates with Complainant and so the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <antisocialsocialclubs.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 2, 2023
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