national arbitration forum

 

DECISION

 

Fortune Hi-Tech Marketing, Inc. v. N/A / Dell Wann

Claim Number: FA1206001447906

 

PARTIES

Complainant is Fortune Hi-Tech Marketing, Inc. (“Complainant”), represented by Jason R. Fulmer of Gardere Wynne Sewell LLP, Texas, USA.  Respondent is N/A / Dell Wann (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fhtmscamnews.com>, registered with Square Brothers Information Technologies Pvt Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 11, 2012.

 

On June 19, 2012, Square Brothers Information Technologies Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <fhtmscamnews.com> domain name is registered with Square Brothers Information Technologies Pvt Ltd and that Respondent is the current registrant of the name.  Square Brothers Information Technologies Pvt Ltd has verified that Respondent is bound by the Square Brothers Information Technologies Pvt Ltd 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2012 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@fhtmscamnews.com.  Also on June 21, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

a)    Complainant has rights in the FHTM mark which it is associated with a multi-level marketing company connecting independent sales representatives to a network of companies producing or providing goods and services;

b)    Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the FHTM mark (e.g., Reg. No. 3,803,573 registered June 15, 2010);

c)     The <fhtmscamnews.com> domain name is confusingly similar to the FHTM mark;

d)    Respondent is not commonly known by the <fhtmscamnews.com> domain name;

e)    The <fhtmscamnews.com> domain name resolves to a complaint website about Complainant;

f)     Respondent has made a pattern of bad faith registration of domain names;

g)    The <fhtmscamnews.com> domain name is disruptive to Complainant’s business;

h)    Respondent had actual and/or constructive notice of Complainant’s rights in the FHTM mark prior to its registration and use of the <fhtmscamnews.com> domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its FHTM mark.

2.    Respondent’s <fhtmscamnews.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the FHTM mark. Complainant states that they use the FHTM mark in connection with a multi-level marketing company that connects independent sales representatives with producers and providers of various products. Complainant provides the Panel with evidence of its ownership of registrations for the FHTM mark (e.g., Reg. No. 3,803,573 registered June 22, 2010) with the USPTO. The Panel finds that despite Respondent being located outside of the country that the FHTM mark is registered in that Complainant has rights in the FHTM mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant asserts that Respondent’s <fhtmscamnews.com> domain name is confusingly similar to the FHTM mark. Complainant contends that Respondent simply took Complainant’s mark and added the generic terms “scam” and “news” as well as the generic top-level domain (“gTLD”) “.com” to create the disputed domain name. The Panel finds that the addition of generic terms does not negate a finding of confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel also finds that the addition of a gTLD is similarly irrelevant to a Policy ¶ 4(a)(i) analysis. See 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 <fhtmscamnews.com> domain name is confusingly similar to the FHTM mark under Policy ¶ 4(a)(i).

 

 

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 contends that Respondent is not commonly known by the <fhtmscamnews.com> domain name. Complainant argues that Respondent has not been authorized to use the FHTM mark and has no trademark rights reflecting the <fhtmscamnews.com> domain name. Additionally, Complainant notes that the WHOIS record for the disputed domain name lists “N/A / Dell Wann” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <fhtmscamnews.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant contends that Respondent’s use of the <fhtmscamnews.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <fhtmscamnews.com> domain name, Complainant argues, resolves to a complaint website. Complainant argues that the resolving website includes portions from the class action website involving Complainant. The Panel notes that the prior class action website provided information relating to a legal dispute between a multitude of individuals against Complainant. Panels have found that a respondent does not have rights or legitimate interests in a domain name that is confusingly similar to a complainant’s mark and is operated as a complaint site. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Therefore, the Panel finds that Respondent’s use of the <fhtmscamnews.com> domain name as a complaint website about 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.

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <fhtmscamnews.com> domain name in bad faith. Complainant argues that Respondent is actually an individual by the name of Joseph M. Isaacs, a former sales representative for Complainant, and has been using aliases in order to register domain names. Complainant argues that Respondent has been found in a previous UDRP dispute to have registered the <fhtmclassaction.info> domain name in bad faith and ordered it to be transferred back to Complainant. See Fortune Hi-Teck Marketing, Inc. v. Phuket Wekib/Phuket Wekib Servs., FA 1412581 (Nat. Arb. Forum Dec. 2, 2011). Complainant argues that Respondent allowed a default judgment regarding this domain name rather than to expose its real name. Complainant provides the Panel, in Exhibit G, with the affidavit of Heather McCalley, an independent Cyber Intelligence Analyst for Packetninjas, LLC. In this affidavit, McCalley states that the composition of the <fhtmclassaction.info> and the <fhtmscamnews.com> domain names indicates that they were registered and operated by the same individual. Complainant notes that on the day following the transfer of the <fhtmclassaction.info> domain name Respondent registered the <fhtmclassaction.in> domain name to continue publically displaying disparaging comments about Complainant. Complainant notes that for this domain name Respondent used the “Dell Wann” alias for registration and the website was operational within three days. Complainant argues that Respondent’s ability to register and develop an entire website in three days makes it clear that the registrant of the domain names is using alias to protect itself from having a history of bad faith for the purpose of inevitable future UDRP decisions. Therefore, the Panel finds that Respondent registered and is using the <fhtmscamnews.com> domain name in bad faith as a result of its establishment of a pattern of bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

Complainant contends that Respondent’s registration and use of the <fhtmscamnews.com> domain name is disruptive to Complainant’s business. Complainant notes that the <fhtmscamnews.com> domain name resolves to a complaint website about Complainant. Complainant argues that Respondent is disrupting Complainant’s business by tarnishing the reputation of Complainant and its mark. The Panel takes a broad interpretation of what is considered a competitor and finds that Respondent’s registration and use of the <fhtmscamnews.com> domain name demonstrate disruption and thus bad faith under Policy ¶ 4(b)(iii). See See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”). 

Complainant’s allegations that respondent registered and is using the <fhtmscamnews.com> domain name in bad faith are furthered by Complainant’s notation of the use of the <fhtmscamnews.com> domain name. Complainant states that Respondent registered and is using the disputed domain name to host a complaint website regarding Complainant’s company. Panels have found that the operation of a complaint website at a domain name which is confusingly similar to the complainant’s mark is evidence of bad faith. See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith). Therefore, the Panel finds that Respondent registered and is using the <fhtmscamnews.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant asserts that, due to its trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the FHTM mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of the <fhtmscamnews.com> domain name to operate a complaint site indicates that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <fhtmscamnews.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

 

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 <fhtmscamnews.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 6, 2012

 

 

 

 

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