national arbitration forum

 

DECISION

 

FIRESTARTER LLC v. XSEMI LLC

Claim Number: FA1307001511474

 

PARTIES

Complainant is FIRESTARTER LLC (“Complainant”), represented by Calrie Marsh, Florida, USA.  Respondent is XSEMI LLC (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <whyimbroke.com>, registered with GODADDY.COM, LLC.

 

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.

 

Anne M. Wallace, Q.C., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2013; the National Arbitration Forum received payment on July 24, 2013.

 

On July 25, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <whyimbroke.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 July 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2013 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@whyimbroke.com.  Also on July 30, 2013, 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 August 19, 2013.

 

Complainant submitted an Additional Submission on August 26, 2013, and determined to be Compliant.

 

On August 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

Respondent submitted and Additional Submission on September 4, 2013, determined to be Compliant.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits:

 

 

 

B. Respondent

 

Respondent submits:

 

C. Additional Submissions

Complainant’s Additional Submission

Complainant submits:

 

Respondent’s Additional Submission

Respondent submits:

 

FINDINGS

1.    Complainant owns the rights in the THIS IS WHY I’M BROKE trademark, which is a word mark. Those rights date from November 28, 2011 which was the date of filing of the trademark application.

2.    The disputed domain name, <whyimbroke.com> is confusingly similar to Complainant’s Mark.

3.    Respondent does not have rights or legitimate interests in the disputed domain name.

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

5.    Complainant has not engaged in reverse domain name hijacking.

 

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 owns rights in the THIS IS WHY IM BROKE trademark (word mark) as a result of its registration with the USPTO (Reg. No. 4,178,898 filed November 28, 2011, registered July 24, 2012). Previous panels have found that a USPTO trademark registration is evidence that the complainant owns the claimed trademark, and further, that the date on which the trademark was filed is the date upon which a complainant’s rights are valid. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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). Complainant’s rights in the THIS IS WHY IM BROKE mark, therefore, are valid pursuant to Policy ¶ 4(a)(i), and Complainant’s rights date back to its filing date of November 28, 2011, before Respondent became owner of the disputed domain name. Because of this, I need not address Respondent’s arguments about whether the Complainant has common law right in the mark because rights have been established through the trademark registration.

 

Complainant alleges in its Complaint and Additional Submission that the <whyimbroke.com> domain name is confusingly similar to Complainant’s THIS IS WHY IM BROKE mark. Complainant points out that the disputed domain name partially includes the mark, removing the word “this.” The domain name also omits the word “is,” as well as the spaces between the words of the mark. Removing the short words “this” and “is” from the mark does not take away the confusing similarity. The domain name also includes the generic top-level domain (“gTLD”) “.com.” Removing words and spacing from a mark do not distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Attaching a gTLD to the end of a mark also fails to distinguish the domain name from the mark, under Policy ¶ 4(a)(i). 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).

The small differences between the disputed domain name and Complainant’s mark are not sufficient to remove the disputed domain name from being confusingly similar to Complainant’s THIS IS WHY IM BROKE mark, for the purposes of Policy ¶ 4(a)(i). The core element of the mark is the words WHY I’M BROKE and these words are the core element of the disputed domain name.

 

While Respondent contends the <whyimbroke.com> domain name is comprised of common and generic and descriptive terms, and as such cannot be found to be confusingly similar to Complainant’s mark, Policy ¶ 4(a)(i) only considers whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

While Respondent argues that its registration of the <whyimbroke.com> domain name predates Complainant’s alleged rights in the mark, Policy ¶ 4(a)(i) considers only whether Complainant has rights in the mark and whether the disputed domain name is 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).”).

 

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 Respondent is not commonly known by the <whyimbroke.com> domain name. The WHOIS information states the registrant of the domain name is “XSEMI LLC.” The WHOIS information is persuasive evidence that goes toward a finding that a respondent is not commonly known by the disputed 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). The WHOIS information which bears no resemblance whatsoever to the <whyimbroke.com> domain name is prima facie proof pursuant to Policy ¶ 4(c)(ii)Respondent is not commonly known by the disputed domain name. Complainant has met the prima facie case on this element.

 

Respondent or its predecessor owned the <whyimbroke.com> domain name for three years before the disputed domain name was transferred to Respondent. Respondent made no use of the domain name other than to park the website. Complainant argues that providing a parked webpage at the disputed domain name fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s prior use of the domain name to establish a parking a website fails to demonstrate a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).

 

The important dates and events for this case are:

·        The original domain name registration for <whyimbroke.com> was April 10, 2009. This domain name remained “parked” for more than three years.

·        Complainant registered the <thiswhyimbroke.com> domain name on May 25, 2011.

·        Complainant filed its trademark application November 28, 2011. Complainant’s rights in the mark are recognized from this date onward.

·        On or about May 18, 2012, Respondent acquired disputed domain name and by September, 2012, began using the disputed domain name for a similar purpose to Complainant’s use of its domain name and mark.

Complainant contends that on or about September 18, 2012, Respondent added a “modest amount of content,” including offering goods for sale on an online retail store identical to the one already established by Complainant over a year earlier. Complainant claims Respondent only formed the intent to use the disputed domain name for such purposes after discovering Complainant’s use of the <thisiswhyimbroke.com> domain name, and contends Respondent’s current use demonstrates its lack of legitimate rights or interests in the disputed domain name.

By hosting an online store that competes with Complainant’s business, Respondent does not use the <whyimbroke.com> domain name to make 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

Registration and Use in Bad Faith

Complainant says Respondent’s bad faith registration and use is apparent because Respondent began using the disputed domain name for a purpose identical to that of Complainant’s business. Complaint had already established a commercial presence for over a year for the same goods and services as those featured on the website resolving from the <whyimbroke.com> domain name. Complainant became aware of Respondent’s use of the disputed domain name after it received e-mails from consumers who were confused by Respondent’s Internet presence. Complainant claims Respondent uses the disputed domain name to intentionally confuse Internet users to make a financial gain. Respondent admits that it receives a commission when it sends website visitors to the retailers featured on its website. The evidence establishes Respondent uses the <whyimbroke.com> domain name to confuse Internet users and attract traffic to the resolving website in order to make a financial gain, demonstrating bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Complainant further alleges Respondent previously used the <whyimbroke.com> domain name to establish a parked website, which is further evidence of Respondent’s bad faith. Previous panels have stated that a respondent using a parked webpage will be held responsible for the content on the page. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position in of the respondent is also responsible for the sponsored links currently appearing on the website.”). Parked web pages generally include hyperlinks to various third-party entities, either related or unrelated to complainant. Parking a website at the disputed domain name can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Complainant responds to Respondent’s argument that the disputed domain name predates Complainant’s rights in the THIS IS WHY IM BROKE mark in its Additional Submission. Complainant argues that Respondent’s bad faith registration and use of the domain name is evident, as other entities owned the disputed domain name prior to Respondent, and thus Respondent did not acquire the domain name until May 2012. Complainant asserts this makes predating a non-issue. I have already noted, that in so far as Respondent is concerned, its ownership of the registration does not predate Complainant’s mark. Complainant’ s trademark registration dates from November 2011 and Respondent did not own the disputed domain name until May 2012.

 

The circumstances involve registration of the disputed domain name, followed by a parked website, followed by Complainant’s registration and use of its marks and domain name and establishment of Complainant’s business, followed by sale of the disputed domain name to Respondent, followed by Respondents use of the disputed domain name to operate a site with similar and identical content to Complainant’s site, and carrying on a similar business. The circumstances all lead to the inference which has not been rebutted, that Respondent uses the <whyimbroke.com> domain name to confuse Internet users and attract traffic to the resolving website in order to make a financial gain. This establishes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

In light of my findings in this matter, it follows that the panel rejects the Respondent’s claim of reverse domain name hijacking.

 

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

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  September 18, 2013

 

 

 

 

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