Brentwood Holding Group Inc v. Joe Galway / TheMissing.ca
Claim Number: FA2004001891550
Complainant is Brentwood Holding Group Inc (“Complainant”), represented by Alina Landver of LANDVER LAW CORPORATION, APC, California, USA. Respondent is Joe Galway / TheMissing.ca (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flngchat.com> and <flingflip.com> (the “disputed domain names”), registered with Name.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2020; the Forum received payment on April 9, 2020.
On April 10, 2020, Name.com, Inc.; confirmed by e-mail to the Forum that the <flngchat.com> and <flingflip.com> disputed domain names are registered with Name.com, Inc.; and that Respondent is the current registrant of the names. Name.com, Inc.; has verified that Respondent is bound by the Name.com, Inc.; 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 April 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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 postmaster@flngchat.com, postmaster@flingflip.com. Also on April 13, 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 April 23 and 24, 2020, the Respondent sent emails to the Forum. However, they do not comply with Supplemental Rule 7 since the Respondent did not copy Complainant on the emails, Therefore, the Panel has not considered them.
On May 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Brentwood Holding Group Inc, is a company that markets adult dating and video chat. Complainant asserts rights in the FLINGSTER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,235,295, registered on July 4, 2017) (the “FLINGSTER Mark”).
The disputed domain names are confusingly similar to the FLINGSTER Mark, as the domain names incorporate the dominant feature from the FLINGSTER Mark and merely add the descriptive terms “chat” or “flip”.
Respondent lacks rights and legitimate interests in the disputed domain names, Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s FLINGSTER Mark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to impersonate Complainant in order to sell competing products and services.
Respondent registered and is using the disputed domain names in bad faith to divert Internet users to its websites where it offers competing products and services. Additionally, Respondent had actual knowledge of Complainant’s rights in the FLINGSTER Mark at the time the disputed domain names were registered, on December 15, 2019 and February 2, 2020, respectively.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
On April 22, 2020, the Complainant’s counsel alerted the Forum that the Respondent had placed viruses on its websites
On April 23 and April 24, 2020, the Respondent sent several emails claiming he did not wish to be involved in any arbitration, that he never agreed to be involved in an arbitration and that he did not receive any certified mail from the Forum.
Complainant holds trademark rights in the FLINGSTER Mark. The disputed domain names are confusingly similar to Complainant’s FLINGSTER Mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain names and that Respondent registered and is using the disputed domain names 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:
(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 Panel finds that Complainant has rights in the FLINGSTER Mark under Policy ¶ 4(a)(i). Complainant has rights in the FLINGSTER Mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 5,235,295, registered on Jul. 4, 2017).
Respondent’s disputed domain names are confusingly similar to Complainant’s FLINGSTER Mark because the disputed domain names incorporate a dominant feature of Complainant’s FLINGSTER Mark and merely add the descriptive terms “chat” or “flip”, followed by the generic Top-Level Domain (“gTLD”) “.com”. In UDRP cases where the dominant feature of the relevant mark is recognizable in a domain name, the domain name will be considered confusingly similar to that mark. Furthermore, the addition of generic and/or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as it did not respond to the Complaint, but given the facts of this case, the Panel finds Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the FLINGSTER Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, because the disputed domain names resolve to a parked webpage containing competing and deceptive links through which Respondent presumably receives click-through referral fees. Such use suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names list the registrant of the disputed domain names as “Joe Galway / TheMissing.ca” and nothing in the record indicates that Respondent is licensed to use Complainant’s FLINGSTER mark or is commonly known by the disputed domain names.
Respondent also fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain names to impersonate Complainant in order to offer competing goods. Use of domain names to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides screenshots of Respondent’s websites which feature Complainant’s FLINGSTER Mark and offer competing services, demonstrating that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel concludes that Respondent registered and is using the Disputed Domain Names in bad faith.
First, Respondent is disrupting Complainant’s business and diverting users to the disputed domain names to offer competing goods and services. Using a disputed domain name to mislead users and redirect them to a competing website indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Second, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Finally, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names since actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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.”). Respondent had actual knowledge of Complainant’s rights in the FLINGSTER mark due to the popularity and well-known name of Complainant, its brands and its services along with Respondent’s attempt to mimic Complainant in order to sell competing services.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flngchat.com> and <flingflip.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 11, 2020
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