Optimistic Investments, LLC v. Justin Ligeri
Claim Number: FA2203001989447
Complainant is Optimistic Investments, LLC (“Complainant”), represented by J. Mark Dickison of LAWSON & WEITZEN, LLP, Massachusetts, USA. Respondent is Justin Ligeri (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kangaroomanufacturingincorporated.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2022; the Forum received payment on March 23, 2022.
On March 23, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <kangaroomanufacturingincorporated.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 March 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@kangaroomanufacturingincorporated.com. Also on March 24, 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.
A timely Response was received and determined to be complete on April 4, 2022.
On April 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
On April 7, 2022, pursuant to Rule 12, the Panel requested that the parties provide additional information by April 15, 2022. Both parties provided additional submissions pursuant to that request, see below.
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.
Respondent requests that the domain name remain with Respondent.
A. Complainant
Complainant states that it uses the KANGAROO MANUFACTURING mark in connection with the products it offers for sale on Amazon. The mark was registered in the United States in 2017 and was assigned to Complainant on May 30, 2019. Complainant was also assigned a distinctive figurative mark KANGAROO.
Complainant alleges that the disputed domain name is identical or confusingly similar to its KANGAROO MANUFACTURING mark because it incorporates the mark in its entirety while merely adding the generic term “incorporated” along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use its KANAGAROO MANUFACTURING mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving website purports to sell Complainant’s goods, however it is not actually possible to purchase the goods.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent does not actively use the disputed domain name to sell goods. Respondent’s website disrupts Complainant’s business because it purports to sell Complainant’s goods. Respondent made use of a privacy service to conceal its identity. Respondent acted with actual knowledge of Complainant’s rights in the KANGAROO MANUFACTURING mark.
B. Respondent
Respondent states that he is the owner of Kangaroo Manufacturing, Inc. and purchased the company on December 9, 2021 out of United States Bankruptcy Court. In support, Respondent submits a document that states, in pertinent part: “For a payment of $170,000.00 … the … Trustee of the Bankruptcy Estate of Justin Ligeri … does hereby transfer, sell and convey … to JNBV LLC all right, title and interest of the debtor [Justin Ligeri] and the bankruptcy estate in Kangaroo Manufacturing, Inc.”
Respondent further asserts that all of the words used in the domain name, aside from being the exact words used in Respondent’s company name, are all general words found in the dictionary and cannot be owned for all purposes.
C. Additional Submissions
Respondent
In response to the Panel’s request for additional information, Respondent states that JNBV LLC (the entity to which “all right, title and interest of the debtor [Respondent Justin Ligeri] and the bankruptcy estate in Kangaroo Manufacturing, Inc” were transferred by the Bankruptcy Court on December 9, 2021) is a Wyoming corporation that he owns fully that handles his business. He produces evidence that he was appointed as manager of JNBV LLC. He also produces unsigned documents regarding his role in JNBV LLC.
According to Respondent, JNBV LLC has no relationship to Complainant other than being the defendant in over a dozen frivolous lawsuits by Complainant. JNBV has never done any business with Complainant but has had its business attacked.
Further, says Respondent, Complainant’s personnel used to be his best friends and employees and during Covid they robbed his warehouse (around 40 Million dollars), hacked into his Visa/Mastercard processing via Amazon and redirected millions of his company revenue to their personal accounts, stole all his business files, even his personal effects such as clothing and suitcases he kept. They forged checks. They forged an IP document trying to steal IP valued at 25,000,000 for no money. Since they weren't paying for it their fake contract said that Respondent was selling it for a "past debt". They destroyed Respondent’s life and he lost everything. They are engaging in a campaign to perfect their heist and spend enough to make sure they never get caught.
Finally, Complainant admits that the trademarks are in dispute. He will no longer use his old distinctive figurative mark KANGAROO. However there is no dispute that he owns the company whose name corresponds to the disputed domain name. Further, on the basis of the transfer to JNBV LLC mentioned above, he owns the copyrights on every photo and toy on the websites associated with the disputed domain name.
Complainant
In response to the Panel’s request for additional information, Complainant states that Kangaroo Manufacturing, Inc. (“KMI”), a Florida corporation solely owned by Respondent, filed Articles of Dissolution and a Notice of Corporate Dissolution on March 20, 2019. Complainant produces unsigned copies of the Articles of Dissolution and Notice of Corporate Dissolution; the submitter of the documents identifies himself as bookkeeper.
On May 30, 2019, KMI and Complainant entered into an Assignment and Reseller Agreement (“Assignment and Reseller Agreement”), pursuant to which KMI assigned to Complainant multiple assets, including the <kangaroomfg.com> domain name, the KANGAROO marks, and “any trademarks, service marks, domain name or other source identifier that is a derivative of or confusingly similar to the Marks”. The Assignment and Reseller Agreement permitted KMI to “purchase from [Complainant] all products that it wishes to promote, advertise and sell using or branded with the Assigned Marks from [Complainant] (the ‘Products’)”. Moreover, in the Assignment and Reseller Agreement, Complainant granted to KMI “a non-exclusive license to use the Assigned Marks in connection with the promotion, advertisement and/or sale of the Products,” i.e., products KMI purchased from Complainant. Complainant attaches a signed and notarized copy of the Assignment and Reseller Agreement.
However, says Complainant, KMI never purchased products from Complainant pursuant to the Assignment and Reseller Agreement, and, by letter dated November 12, 2021, Complainant terminated the Assignment and Reseller Agreement.
On December 7, 2021, a second Kangaroo Manufacturing, Inc., of which Respondent is an Officer/Director, filed Articles of Incorporation in Florida.
Complainant states that it does not have and has never had relations with JNBV LLC, which on or about December 9, 2021, acquired Respondent’s interest in KMI in Respondent’s bankruptcy; no intellectual property was sold to JNBV; only the stock ownership of KMI was sold to JNBV; KMI owned nothing other than some accounts receivable.
Complainant produces a Federal Court preliminary injunction, dated December 13, 2021, enjoining certain parties (which, according to Complainant, include Respondent’s brother) from using Complainant’s marks, from selling Complainant’s products, and from using the domain name <kangarooproduct.com> to market products associated with Complainant’s marks.
Complainant does not operate a website in relation to products related to the KANGAROO MANUFACTURING mark. Rather it sells products, directly and indirectly, on Amazon.
Further, Complainant presses its case, stating that Respondent has not rebutted the arguments set forth in the Complaint.
In addition, Complainant states that on April 10, 2022 the resolving website displayed the various products Complainant sells under its mark, including products displaying Complainant’s mark. However, attempts to purchase products listed on Respondent’s website failed because links labeled “Add to cart” and “Buy it now” were inoperable.
Complainant alleges that Respondent’s purpose in having an inoperable website displaying products with Complainant’s mark was solely to serve as fraudulent but plausible basis for Respondent to request that Amazon take down KANGAROO MANUFACTURING brand products that Complainant offers for sale on Amazon. Complainant produces evidence that Amazon did indeed take down certain products.
Complainant states that Respondent registered the domain name <crazygamesllc.com>, having no rights in the CRAZY GAMES mark and solely for the purpose disrupting Crazy Games, LLC’s business; the owner of Complainant, Joshua Tischer, also is an owner of Crazy Games, LLC. Complainant produces the UDRP decision transferring the <crazygamesllc.com> domain name to the complainant in that case.
Complainant states that, on March 24, 2022, Respondent pled guilty in Arizona to a charge of Attempt to Commit Stalking. One of the two victims is Joshua Tischer, principal of Complainant. Complainant produces a court record to support this allegation. Complainant also produces a newspaper article according to which Respondent was a one-time retail superstar who allegedly offered to hire a former employee to attack Complainant’s principal in connection with a dispute separate from the instant case. According to that article, Respondent accused Complainant’s principal of having stolen his company.
Finally, Complainant states that, contrary to Respondent’s assertion, Complainant has not filed even a single lawsuit against JNBV, LLC and is not a party to any lawsuit in which JNBV, LLC is a party. Respondent’s statement that it is the “defendant in over a dozen frivolous lawsuits by the [C]omplainant” is false. Respondent’s assertions that Complainant engaged in multiple criminal acts (including robbery, credit card fraud, theft, and forgery) are false and defamatory. Respondent is the only party to this proceeding that has been charged with and a convicted of a felony where the opposing party is the victim.
The parties raise various issues that are outside of the scope of the present proceedings, and are best resolved in national courts. See Indoor Air Technologies, Inc. v. Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc., FA 1714547 (Forum Mar. 14, 2017); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy); see also Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
Consequently, and in particular, the Panel will not make any findings concerning the following: whether Complainant or Respondent violated or are violating any copyrights; whether Complainant and/or its principal defrauded Respondent, in particular by obtaining the assignment of his marks.
However, the Panel will make findings of fact that are related to whether Respondent has rights or legitimate interests in the disputed domain name.
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 Panel has consulted the Internet Archive and found that Respondent created Kangaroo Manufacturing, Inc. It was active until the end of 2020 through the web site <kangaroomfg.com> which displayed the distinctive figurative mark that is now owned by Complainant. Complainant and Respondent were presented with this finding and did not dispute it.
Section 4.2 of the cited WIPO Jurisprudential Overview 3.0 states: “The applicable standard of proof in UDRP cases is the ‘balance of probabilities’ or ‘preponderance of the evidence’; some panels have also expressed this as an ‘on balance’ standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true…. [C]onclusory statements unsupported by evidence will normally be insufficient to prove a party’s case.” See Citigroup Inc. v. Philip Morrish, FA 1600832 (Forum Mar. 3, 2015) (“The circumstances lead this Panel to conclude that on the balance of probabilities …” ); see also Thermo Holdings, LLC v. Park KyeongSook, FA1608001690428 (Forum Sept. 25, 2016) (“Panel must therefore decide whether, on the evidence before it, it was more likely than not (the applicable standard of proof) …”)
Consequently, the Panel will apply the balance of probabilities when weighing the evidence in the file in order to make findings of fact.
Respondent created Kangaroo Manufacturing, Inc. It was active until the end of 2020 through the web site <kangaroomfg.com> which displayed the distinctive figurative mark that is now owned by Complainant.
Complainant acquired rights in the mark KANGAROO MANUFACTURING from Respondent on May 3, 2019. It also acquired from Respondent the rights to the distinctive figurative mark KANGAROO.
Complainant uses its marks to sell products on Amazon.
The disputed domain name was registered on December 15, 2021.
The resolving website purported to offer Complainant’s products for sale. Pursuant to a request that referred to the resolving website, Amazon took down some of Complainant’s products.
Respondent has lost a UDRP proceeding involving a different mark and a complainant of which Complainant’s principal is an owner.
Respondent has pled guilty to stalking Complainant’s principal.
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.
The disputed domain name incorporates Complainant’s KANGAROO MANUFACTURING mark in its entirety and merely adds the generic term “incorporated” and the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a Complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a generic term and a gTLD. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent been not been authorized to use Complainant’s KANGAROO MANUFACTURING 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 known by a domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record lists the registrant as “Justin Ligeri.” Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent argues that he has rights or legitimate interests in the disputed domain name because it is composed of common words. The cited WIPO Jurisprudential Overview 3.0 states at 2.10:
The fact that a particular term has a dictionary meaning is sometimes confused with the notion of a “generic” term. When used in a non-dictionary distinctive sense (i.e., in a manner that bears no relation to the goods or services being sold), such dictionary terms can function as “arbitrary” trademarks. (See the “orange” example below.)
Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
For example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange. The same respondent would not however have a legitimate interest in the domain name if the corresponding website is aimed at goods or services that target a third-party trademark (in this example: Orange, well-known inter alia for telecommunications and Internet services) which uses the same term as a trademark in a non-dictionary sense.
In the instant case, the resolving website is not related to the dictionary meaning of the dominant term of the disputed domain name: “kangaroo”. Rather, the resolving website is directly related to Complainant’s mark, and trades off that mark by purporting to offer Complainant’s products for sale.
Respondent also argues that he has rights or legitimate interests in the disputed domain name because it corresponds to the name of his company. As noted above, the disputed domain name was registered by Respondent, not by a company. Further, it is not clear whether Respondent is referring to the new company created on December 7, 2021, or to the original KMI which was dissolved on March 20, 2019. Be that as it may, the Panel finds, on the balance of probabilities, that neither company would be entitled to sell Complainant’s products.
Previous Panels have found a domain name is not being used in connection with a bona fide offer of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent uses a domain name to offer a complainant’s products for sale without authorization. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The evidence in the record of the instant case includes a case of abusive registration by Respondent of a domain name that is confusingly similar to a mark owned by a company of which Complainant’s principal is an owner; Respondent’s pleading guilty to stalking Complainant’s principal; and Amazon taking down some of Complainant’s products when notified of the web site to which the disputed domain name resolves. The Panel finds, on the balance of probabilities, that Respondent registered the disputed domain name in order to take revenge on Complainant’s principal and disrupt his business. This does not create rights or legitimate interests under the Policy. See Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA1602001660728 (Forum Mar. 22, 2016) (“There is, however, an additional reason why, in the present case, Respondent’s use of the domain names for its websites is not a legitimate or fair use. In the Panel’s view the present case is … one where the site is clearly intended for denigration and disparagement, and probably as Complainant submits, revenge …”); see also Mohawk Canoe Club, Inc. v. Mohawk Computer Company, Inc. c/o George Fluck, Claim Number: FA0411000371790 (Forum Jan. 18, 2005) (“The Panel believes Respondent’s intention is both to deprive Complainant of the possibility of using the disputed domain names and, if possible, to disrupt Complainant’s activities. In general, Respondent wants to be a thorn in the side of Complainant. In the Panel’s view, Respondent’s conduct violates the bad faith provisions of two separate paragraphs of the Policy [including 4(b)(iii)].”).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
The resolving website purported to sell Complainant’s products and thus disrupted Complainant’s business. Use of a domain name to disrupt a complainant’s business by offering a complainant’s products for sale may be evidence of bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Mohawk Canoe Club, Inc. v. Mohawk Computer Company, Inc. c/o George Fluck, cited above. Therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: Respondent assigned the mark to Complainant (Respondent contends that the assignment was invalid, but this does not contradict the finding that he knew of the mark). While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kangaroomanufacturingincorporated.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 18, 2022
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