NATIONAL ARBITRATION FORUM

DECISION

Luminous Media Limited v. Roi Gal
Claim Number: FA1009001345388

PARTIES

Complainant is Luminous Media Limited ("Complainant"), represented by Maulin V. Shah of UDRPro, LLC, New York, USA.  Respondent is Roi Gal ("Respondent"), Hawaii, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myflashwear.com >, registered with GoDaddy.com, Inc.

PANEL

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.

Hon. Nelson A. Diaz (ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2010; the National Arbitration Forum received payment on September 9, 2010.

On September 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the myflashwear.com domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). 

On September 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2010 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@myflashwear.com.  Also on September 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 September 29, 2010.

Complainant’s Additional Submission was received on October 4, 2010 in compliance with Supplemental Rule 7.

On October 13, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.                 Complainant

Complainant, Luminous Media Limited ("Luminous Media"), was established in 2005, and is currently the world's leading manufacturer of dynamic advertising and marketing products that use electroluminescence technology.  Complainant owns United States Trademark Reg. No. 3,817,785 for FLASHWEAR, registered on July 13, 2010. Furthermore, Complainant has established common law rights in its trademark FLASHWEAR since as early as January 11, 2006, prior to Respondent's registration of the Disputed Domain Name.  The Disputed Domain Name incorporates the entirety of Complainant's mark and merely adds an additional prefix "my" before the mark, as well as a generic top-level domain ".com". Such minor differences do not serve to distinguish the Disputed Domain Name from Complainant's mark. The Disputed Domain Name resolves to a website that offers goods in direct competition with Complainant's trademarked goods. Additionally, there is no evidence in the record to suggest that Respondent is commonly known by the Disputed Domain Name and on September 6, 2010, Respondent offered to sell the Disputed Domain Name to Respondent.  Respondent registered the Disputed Domain Name with knowledge of Complainant's trademark and website that sells electroluminescent t-shirts. The Disputed Domain Name resolves to Respondent's commercial website that offers electroluminescent t-shirts for sale that are in direct competition with Complainant. In addition, Respondent is using the Disputed Domain Name to generate revenue through its offering of competing t-shirts and by confusing Internet users as to Complainant’s affiliation with the Disputed Domain Name and resolving website.  Respondent registered the domain name with actual knowledge of Complainant’s rights in the FLASHWEAR mark. Because of the obvious similarities in the layout and text of Respondent's website, and the products and information contained on Respondent's website, with that of Complainant's <flashwear.com> website, it can reasonably be inferred that Respondent had actual knowledge of Complainant’s trademark rights.

B.                 Respondent

Complainant do have the trade mark FLASHWEAR register on July 13, 2010 however, complainant is acting in deceiving and misleading the forum by not mentioning that he did not have any right on the trade mark FLASHWEAR prior to November of 2009.

Complainant is claiming common law right while others already had the name FLASHWEAR in use.  His evidence is nothing but a claim with no actual proof.

Respondent is merely using FLASHWEAR as word in its ordinary, everyday meaning and not as an indicator of source.  The respondent offers to sell the domain as part of good faith to settle, with the belief he owns the domain in dispute and that the complaint have strong interest in that domain.  The word FLASHWEAR is purely descriptive word and not a source of an item.  The word flash wear is not common to the brand the complaints claim for the forum and merely a way to describe a product and respond as merely use it in round.  Descriptive words cannot be the subject of trademark since, by definition, they “describe” the goods or services as opposed to serve to “identify” a particular brand of goods or services which in our case the word FLASHWEAR is descriptive.

At the time respondents registered the domain name in dispute and there was no registered trade mark of the name FLASHWEAR in process from March of 2009 to November of 2009.

C.                 Additional Submissions

On September 29, 2010, Complainant made an Additional Submissions alleging that the trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) so long as Complainant produces evidence to show that it owns common law rights in its mark.  Complainant had established common law trademark rights in the mark FLASHWEAR prior to Respondent’s registration of the Disputed Domain Name.  Complainant had been using the mark FLASHWEAR in commerce continuously for years before Respondent registered the Disputed Domain Name on May 9, 2009.  Thus, the widespread media attention and recognition of Complainant’s FLASHWEAR mark is evidence of secondary meaning in the public.

FINDINGS

The Respondent has violated ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has provided evidence of its trademark registration for the FLASHWEAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,817,785 filed November 30, 2009; issued July 13, 2010).  Previous panels have found that a trademark registration with the USPTO is sufficient evidence of a complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).  Previous panels have also determined that a complainant’s rights in a registered mark date back to the date the trademark registration was filed.  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).  According to the above precedent, the Panel finds that Complainant has rights in the FLASHWEAR mark dating back to November 30, 2009.

Additionally, Complainant asserts that it was established in 2005 for the purpose of manufacturing, advertising, and marketing products that use electroluminescence technology.  Complainant states that it is headquartered in Hong Kong and has a network of distributors in 23 countries that sell and market its trademarked products.  Complainant also states that it has a United States office located in Pennsylvania, USA.  Complainant indicates that its USPTO trademark registration contains a first use in commerce date of November 10, 2005 and Complainant asserts it has been using the FLASHWEAR mark continuously since that time. Complainant states in its Additional Submission that it registered its <flashwear.com> domain name on April 11, 2002.  Complainant also submits screenshots from its <flashwear.com> website dating back to January 11, 2006.  In its Additional Submission, Complainant also submits screenshots from its website resolving from the <flashwear.com> domain name as of December 27, 2007 showing that Complainant offered its trademarked t-shirt line year after year.  Complainant also argues in its Additional Submission that the FLASHWEAR mark has acquired the requisite secondary meaning.  Complainant indicates that the public associates the FLASHWEAR mark with Complainant and that Complainant’s t-shirts were featured on The Ellen DeGeneres Show and The Montel Williams Show and worn by celebrities such as Fergie of The Black Eyed Peas, comedian Aziz Ansari on NBC’s Parks and Recreation, and the cast of MTV’s Jersey Shore.  The Panel finds that Complainant has provided sufficient evidence of its continuous use of the FLASHWEAR mark to support a finding of common law rights in the mark dating back to November 10, 2005.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Complainant argues that Respondent’s <myflashwear.com> domain name is confusingly similar to Complainant’s FLASHWEAR mark.  Complainant asserts that the disputed domain name incorporates the entirety of Complainant’s mark and merely adds the generic term “my” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that such minor differences do not serve to distinguish the disputed domain name from Complainant’s FLASHWEAR mark.  See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

While Respondent argues that its registration of the <myflashwear.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

While Respondent contends that the <myflashwear.com> domain name is comprised of common and descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

Rights or Legitimate Interests

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant argues that there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  According to the WHOIS information, the registrant of the disputed domain name is known as “Roi Gal.”  The Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii) as Respondent is not commonly known by the <myflashwear.com> domain name.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

Complainant asserts that the disputed domain name resolves to a website that offers goods in direct competition with Complainant’s trademarked goods.  Complainant indicates that it owns the <flashwear.com> domain name where it markets and sells t-shirts that have electroluminescent graphics that animate with, and respond to, sounds and music.  Complainant has submitted evidence showing the similarity between the products offered on Respondent’s disputed domain name and the products Complainant offers under its FLASHWEAR mark.  Complainant further asserts that Respondent likely profits from the sale of these t-shirts and as such, Respondent is not using the disputed domain name in connection with 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). The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

Complainant alleges that in an email dated September 6, 2010, Respondent offered to sell the disputed domain name to Complainant for an unspecified dollar amount.  The Panel finds, that Respondent’s offer to sell the disputed domain name further indicates that Respondent lacks rights and legitimate interests in the <myflashwear.com> domain name under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Registration and Use in Bad Faith

Complainant asserts that on September 6, 2010, in response to a cease and desist letter sent by Complainant, Respondent offered to sell the disputed domain name to Complainant, stating:  “if at any stage your client wish to buy this domain name he can make a nice offer and we will sell it to him.”  The Panel finds that Respondent’s offer to sell the <myflashwear.com> domain name to Complainant establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Complainant argues that Respondent’s disputed domain name resolves to Respondent’s commercial website that offers electroluminescent t-shirts for sale that are in direct competition with Complainant.  Complainant further argues that the diversion of Internet users to Respondent’s confusingly similar disputed domain name disrupts Complainant’s business and thus, constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  The Panel finds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

Complainant alleges that Respondent is using the <myflashwear.com> domain name to generate revenue through its offering of competing t-shirts, and by confusing Internet users as to Complainant’s affiliation with the disputed domain name and resolving website.  The Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name.  Complainant contends that because of the obvious similarities in the layout and text of Respondent’s website, and the products and information contained on Respondent’s website, with that of Complainant’s <flashwear.com> website, it can reasonably be inferred that Respondent had actual knowledge of Complainant’s trademark rights.  Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds Respondent had actual knowledge of Complainant's mark, the Panel finds  Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <myflashwear.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                  

Nelson A Diaz, Panelist

Dated:  October 20, 2010

 


 

 

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