Zebra A/S v. Slavko Malevic / The Wayward Folk
Claim Number: FA2011001922006
Complainant is Zebra A/S (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Slavko Malevic / The Wayward Folk (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flyingtigerclub.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2020; the Forum received payment on November 25, 2020.
On November 25, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <flyingtigerclub.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@flyingtigerclub.com. Also on November 30, 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.
A timely Response was received and determined to be complete on November 30, 2020.
On December 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in FLYING TIGER. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used for a bona fide purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant. Further, that the Respondent used the domain name in bad faith by promoting goods competitive with those offered by Complainant under the trademark.
B. Respondent
The Response is set out in full below.
“After carefully reviewing the documents provided by the lovely and thorough Michelle S [Lead Case Coordinator], and weighing in the Complainant's recent hardships in operating their stores stateside, a great shame I might add, I humbly request this mediation body recognize my agreement with the remedy sought by the Complainant. Further, I extend my kindest hope that the acquisition of a domain name by means of the council's considerable billable hours does what it can to steer the ship right. An email would have sufficed, but hey, food on the table! Great work guys.”
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark FLYING TIGER in connection with its many general surplus stores worldwide;
2. Complainant owns, inter alia, European Union Intellectual Property Office Registration No. 009529637 for the mark FLYING TIGER, registered July 11, 2013, for FLYING TIGER;
3. the disputed domain name was registered on February 10, 2019 and resolves to a website which uses the trademark and offers general merchandise for sale; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating its trademark.
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."
Preliminary Issue: Consent to Transfer
The Response is buffoonery, but it can be concluded that Respondent consents to transfer of the disputed domain name. Respondent has not transferred the name but nor can it at this point since in consequence of these proceedings the Registrar has, as required, placed a hold on Respondent’s account. Respondent cannot transfer the disputed domain name while these proceeding are pending.
The Panel has an option in these circumstances to either immediately order transfer of the domain name or apply the Policy and make a finding based on the evidence before it. In this instance the Panel chooses the latter option having regard to the nature of Respondent’s conduct and the fact that Complainant has not agreed to the request for immediate transfer (see, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”); but see, contra, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), where in spite of an offer to transfer the at-issue domain name the panel applied the Policy since “agreement-to-transfer” was a way cybersquatters abused domain names and avoided a public decision against them).
Substantive Issues
The Panel thus decides to analyze the case and 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”) Since Complainant evidences its registration of the trademark FLYING TIGER with the EUIPO the Panel finds that it has shown trademark rights. The disputed domain name takes the trademark and merely adds the descriptive word, “club”, and the non-distinctive gTLD, “.com”. The Panel finds that the disputed domain name is confusingly similar to the trademark for the purposes of the Policy (see, for example, MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
Neither the publicly available WHOIS information which shielded the name of the true registrant, nor the name of the underlying domain name holder disclosed by the Registrar, provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. There is no relationship between the parties and indeed, buried in the Terms and Conditions page of the resolving website is the statement: “Flying Tiger Club is NOT affiliated with Flying Tiger Copenhagen” (the Panel notes here that Complainant is a Danish corporation).
Further, the evidence shows no legitimate noncommercial or fair use as the domain name since it resolves to a website which uses Complainant's trademark and offers for sale competitive goods. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or interests in the disputed domain name (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) finding that a disclaimer does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the compared terms to be confusingly similar and the Panel finds that the resolving website clearly exists for commercial gain. The use of the disclaimer shows that Respondent targeted Complainant’s trademark. In terms of the Policy, the Panel finds that Respondent’s registered and used a confusing similar domain name intending to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy (see, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flyingtigerclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Esq., Panelist
Dated: December 7, 2020
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