Citi Financial Lending, Inc. v. Den Franklin / Albert Mal
Claim Number: FA1207001453995
Complainant is Citi Financial Lending, Inc. (“Complainant”), Florida, USA. Respondent is Den Franklin / Albert Mal (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maximumslimcoffee.com>, registered with Enom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2012; the National Arbitration Forum received payment on July 18, 2012.
On July 19, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <maximumslimcoffee.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@maximumslimcoffee.com. Also on July 19, 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 August 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Maximum Slim is a wholly owned subsidiary of Complainant and owns exclusive rights to license the trademark MAXIMUM SLIM. Complainant owns trademark registrations for the MAXIMUM SLIM mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,980,791 filed September 6, 2010; registered June 21, 2011) and with the World Intellectual Property Office (“WIPO”) (Reg. No. 1,111,217 registered January 25, 2012).
The <maximumslimcoffee.com> domain name is confusingly similar to the MAXIMUM SLIM mark. The addition of the generic top-level domain, “.com,” is not relevant under Policy ¶ 4(a)(i). The disputed domain name contains the entire MAXIMUM SLIM mark, while adding generic term “coffee” does not distinguish the domain name from the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name according to the WHOIS information, and Complainant has not been given permission to use the MAXIMUM SLIM mark.
Respondent is not using the disputed domain name for 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). Respondent is using the disputed domain name to advertise and sell counterfeit or copied goods of Complainant in direct competition with Complainant.
Respondent registered and is using the disputed domain name in bad faith.
Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users to a website that offers directly competing services.
Respondent profits from the confusion created regarding the sponsorship of the website.
The Disputed Domain Name can only refer to the Complainant. Domain Names that are so obviously connected with such a well-known name and service by someone with no connection suggests opportunistic bad faith.
The domain name resolves to an active website which displays the MAXIMUM SLIM logo and copyright notice ©2010 Maximum Slim Coffee. This use creates the incorrect impression that the Respondent is either the exclusive distributor or a subsidiary of the Complainant or that the Complainant approves of the use made of the Domain name, further compounded by the absence of a disclaimer to this effect.
Respondent was aware of Complainant’s rights in the MAXIMUM SLIM mark. The Respondent’s website and use of the at-issue domain name has been disguised as being owned and operated by a company containing the Complainants own brand, MAXIMUM SLIM; selling the same products and services; displaying the Complainant’s logo; displaying photos of the Complainant’s products resulting in Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO and WIPO registered trademarks for the MAXIMUM SLIM mark.
The at-issue domain name was registered after Complainant acquired trademark rights in MAXIMUM SLIM.
Respondent was aware of the MAXIMUM SLIM mark at the time it registered the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
The <maximumslimcoffe.com> domain name references a website which displays the MAXIMUM SLIM logo and copyright notice ©2010 Maximum Slim Coffee.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has active trademark registrations for its MAXIMUM SLIM mark with both the USPTO and WIPO. Registration with national trademark authorities, no matter the location of the parties, is sufficient for a complainant to establish rights in a mark under 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’s trademark rights relate back to the date of first registration, September 6, 2010. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
For the purposes of analysis under Policy ¶ 4(a)(i) the gTLD, here “.com,” is generally irrelevant. 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). Likewise, removing the spaces from between the terms of Complainant’s mark is also inconsequential as is the addition of the generic term “coffee.” See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Notably, adding the term “coffee,” which is descriptive of a portion of Complainant’s business, tends to increase the similarity between Complainant’s mark and the at-issue domain name rather that differentiate the two. Therefore, the Panel concludes that Respondent’s <maximumslimcoffee.com> domain name is confusingly similar to Complainant’s MAXIMUM SLIM mark under Policy ¶ 4(a)(i).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Complainant has not authorized Respondent to use the MAXIMUM SLIM mark. WHOIS information identifies the registrant of the <maximumslimcoffee.com> domain name as “Den Franklin / Albert Mal.” Based upon this and all other information of record, it is evident that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Furthermore, Respondent’s rights or interests in respect of the domain name cannot be demonstrated under either Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent uses the disputed domain name to advertise and offer goods for sale in direct competition with Complainant. Respondent’s website contains an “Online Shop” page, but states that “Order online is not available. Please contact us.” The “Contact” page contains a blank fill‑in form. There is no indication that any goods are actually being shipped to consumers that contact Respondent via the disputed domain name. Nevertheless, Respondent’s <maximumslimcoffee.com> website features Complainant’s logo and copyright notice at the bottom of the website. These features are designed to lead Internet users to believe they are on a legitimate website sponsored by Complainant. Respondent’s unauthorized and competing use of the at‑issue domain name is not 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Because of the confusing similarity between the Complainant’s mark and the at-issue domain name, as well as the materials presented at the referenced website which falsely indicate Complainant sponsorship of the website, Internet users are likely being diverted away from Complainant and its products and directed to the unauthorized and/or counterfeit products offered by Respondent. Additionally, the fact that Respondent’s website falsely claims that Complainant’s products are “unavailable” when in fact they may be available through authorized channels is a form of trade disparagement. The Panel concludes that Respondent’s use of the disputed domain name in this manner creates a disruption in Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Further, the Panel infers that Respondent profits from the confusion created regarding the sponsorship of the at-issue domain name and sponsorship of the domain name’s website. Respondent uses Complainant’s mark and logo, as well as a contrived copyright notice, to confuse Internet users and consumers into believing Complainant is affiliated with Respondent’s website. The website appears to impermissibly market and sell goods under the MAXIMUM SLIM mark. These circumstances demonstrate that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, the at-issue domain name can only refer to the Complainant; Respondent’s intentional misleading reference to Complainant suggests opportunistic bad faith. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO D2000-0226 (May 17, 2000) (“Moreover the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith.”). Moreover, the unique nature of Complainant’s mark; Respondent’s use of the at‑issue domain name to reference a counterfeit website; the absence of any evidence of a good faith basis for registering the at‑issue domain name and the notoriety of the MAXIMUM SLIM mark, together demonstrate that Respondent was well aware of Complainant and Complainant’s rights in the MAXIMUM SLIM mark when it registered <maximumslimcoffee.com> and that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maximumslimcoffee.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 17, 2012
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