Fortune Hi-Tech Marketing Inc. v. Phuket Wekib / Phuket Wekib Services
Claim Number: FA1110001412581
Complainant is Fortune Hi-Tech Marketing Inc. (“Complainant”), represented by Jayne Conway Hunter, North Carolina, USA. Respondent is Phuket Wekib / Phuket Wekib Services (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fhtmclassaction.info>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2011; the National Arbitration Forum received payment on October 31, 2011.
On October 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fhtmclassaction.info> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2011 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@fhtmclassaction.info. Also on November 4, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fhtmclassaction.info> domain name is confusingly similar to Complainant’s FHTM mark.
2. Respondent does not have any rights or legitimate interests in the <fhtmclassaction.info> domain name.
3. Respondent registered and used the <fhtmclassaction.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fortune Hi-Tech Marketing Inc., is the owner of multiple FHTM marks (e.g., Reg. No. 3,803,573 registered June 15, 2010) with the United States Patent and Trademark Office (“USPTO”). The FHTM mark is used in connection with a multi-level marketing company that connects independent sales representatives to a network of companies which produce or provide a variety of goods and services ranging from personal care products, nutritional supplements, and organic pet supplies.
Respondent, Phuket Wekib / Phuket Wekib Services, registered the disputed domain name on July 13, 2010. The disputed domain name is used as a complaint site attempting to defame Complainant’s business.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant argues that it has rights in the FHTM mark. The FHTM mark has been registered by Complainant through the USPTO(e.g., Reg. No. 3,803,573 registered June 15, 2010). Previous panels have held that registration of a mark with a federal registration office is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Given Complainant’s registration of the FHTM mark, the Panel finds that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <fhtmclassaction.info> domain name is confusingly similar to the FHTM mark. Respondent has fully incorporated Complainant’s mark into the disputed domain name. Additionally, Respondent has added the generic terms “class” and “action” to Complainant’s mark in the domain name. The Panel finds that this change is not substantial enough to alleviate the confusion caused by the incorporation of Complainant’s FHTM mark. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Furthermore, Complainant argues that Respondent’s addition of a generic top-level domain (“gTLD”) to the end of the disputed domain name fails to distinguish the domain name from Complainant’s mark. The Panel finds that Respondent’s addition of the gTLD “.info” is irrelevant for the purposes of a Policy ¶ 4(a)(i) argument. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <fhtmclassaction.info> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this finding and thus the burden shifts now to Respondent to dispute these claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel, however, is without the benefit of a Response from Respondent. Therefore, the Panel will make all inferences which are reasonable from the available information. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still review the record, however, for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS record for the <fhtmclassaction.info> domain name lists “Phuket Wekib / Phuket Wekib Services” as the domain name registrant. Complainant argues that one of its former sales representatives that was fired is using this name as an alias so that it may defame the goodwill established by Complainant through Complainant’s mark. The Panel finds that the <fhtmclassaction.info> domain name does not reflect “Phuket Wekib / Phuket Wekib Services” in the slightest, and thus Respondent cannot be considered to be commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent is not using the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <fhtmclassaction.info> domain name to posts comments about Complainant’s business that are critical in nature. The Panel finds that this use of a domain name fits within neither of the protected uses under the Policy. Therefore, the Panel finds that Respondent’s use of the disputed domain name to criticize Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
In order for a complainant to prevail, there must be a finding that the respondent registered and used the disputed domain name in bad faith. Although Policy ¶ 4(b) provides a list of factors which may be considered in determining whether the respondent has acted in bad faith, the factors listed are by no means exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). The Panel will therefore make a bad faith determination based on the totality of the circumstances.
Complainant argues that Respondent’s bad faith registration and use is demonstrated by the fact that the <fhtmclassaction.info> domain name is used to criticize the actions of Complainant. Panels have found in the past that the registration and use of a disputed domain name to criticize a Complainant’s business is demonstrative of bad faith registration and use. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel thus finds that Respondent’s registration and subsequent use of the <fhtmclassaction.info> domain name to post criticizing comments about Complainant’s business is evidence of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fhtmclassaction.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 2, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page