Blitz NV, LLC v. David Wilkerson
Claim Number: FA2002001882218
Complainant is Blitz NV, LLC (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is David Wilkerson (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, all of which are registered with Godaddy.Com, Llc, are <danbilzeriancbdhempoil.com>, <danbilzerianhempoil.com> and <danbilzeriancbdoil.com>.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2020; the Forum received payment on February 6, 2020.
On February 7, 2020, Godaddy.Com, Llc confirmed by e-mail message addressed to the Forum that the domain names <danbilzeriancbdoil.com>, <danbilzerianhempoil.com> and <danbilzeriancbdhempoil.com> are registered with Godaddy.Com, Llc, and that Respondent is the current registrant of the names. 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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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 the attention of the following: postmaster@danbilzeriancbdoil.com, postmaster@danbilzerianhempoil.com, postmaster@danbilzeriancbdhempoil.com. Also, on February 10, 2020, 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 March 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant controls and enforces Dan Bilzerian’s brand as an Internet personality, actor, venture capitalist and poker player.
Complainant holds a registration for the DAN BILZERIAN service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,801,299, registered July 9, 2019.
Respondent registered the domain names <danbilzeriancbdoil.com>, <danbilzerianhempoil.com> and <danbilzeriancbdhempoil.com> on January 9, 2020.
All of the domain names are confusingly similar to Complainant’s DAN BILZERIAN mark.
Respondent has not been commonly known by any of the domain names.
Respondent is not authorized to use Complainant’s DAN BILZERIAN mark in any fashion.
Respondent fails to use any of the domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent does not have rights to or legitimate interests in the any of the domain names.
Respondent’s use of a privacy service to conceal its identity in registering the domain names evidences bad faith.
Respondent knew of Complainant’s rights in the DAN BILZERIAN mark prior to the registration of the domain names.
Respondent registered and uses all of the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) Each of the domain names was registered and is being used by Respondent in bad faith.
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:
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 to or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the DAN BILZERIAN service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP Complainant’s USPTO registration for its mark sufficiently demonstrated its rights in the mark for purposes of establishing its standing to pursue a complaint under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s <danbilzeriancbdhempoil.com>, <danbilzeriancbdoil.com> and <danbilzerianhempoil.com> domain names are confusingly similar to Complainant’s DAN BILZERIAN mark. Each of the domain names incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of some combination of the generic terms “cbd,” “hemp” or “oil,” plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (determining that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic term and a generic Top Level Domain, the differences between the domain name and the mark being insufficient to distinguish one from the other for purposes of the Policy).
As to the deletion of the space between the terms of Complainant’s mark in creating the domain names, this alteration of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in each of the domain names <danbilzeriancbdhempoil.com>, <danbilzeriancbdoil.com> and <danbilzerianhempoil.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the domain names and that Complainant has not authorized Respondent to use the DAN BILZERIAN mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “David Wilkerson,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that, Respondent employs the domain names to redirect Internet users to the websites of Complainant’s commercial competitors for Respondent’s financial gain. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum December 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain name to take advantage of a UDRP complainant's mark by incorporating it into a domain name that diverted Internet users to a competing commercial site).
We are persuaded by the evidence that Respondent uses each of the challenged domain names, <danbilzeriancbdoil.com>, <danbilzerianhempoil.com>, and <danbilzeriancbdhempoil.com, which we have found to be confusingly similar to Complainant’s DAN BILZERIAN mark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website that competed with the business of a UDRP complainant showed bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the contested domain names when it registered them. This further illustrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s rights in a mark at the time that respondent registered a confusingly similar domain name, and thus that respondent demonstrated bad faith in registering it] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <danbilzeriancbdoil.com>, <danbilzerianhempoil.com> and <danbilzeriancbdhempoil.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 12, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page