Blitz NV, LLC v. Tadeas Jílek
Claim Number: FA1510001641729
Complainant is Blitz NV, LLC (“Complainant”), represented by James D. Boyle of Holley Driggs Walch Fine Wray Puzey &Thompson, Nevada, USA. Respondent is Tadeas Jílek (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dantshirts.com>, registered with Tucows Domains 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2015; the Forum received payment on October 9, 2015.
On October 13, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <dantshirts.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2015 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@dantshirts.com. Also on October 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant asserts common law rights in the DAN BILZERIAN trademark dating back to at least October 2014. The mark is used in connection with the business, social and promotional ventures of Dan Bilzerian, a self-proclaimed world-famous poker player, actor, and internet social media personality. The mark is also used to sell memorabilia in the form of clothing, hats, costumes, and other goods that reflect the ventures of Complainant. The <dantshirts.com> domain name is confusingly similar to the DAN BILZERIAN mark because the domain name eliminates the “BILZERIAN” portion of the mark and adds the descriptive term “tshirts” along with the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage that sells counterfeit and/or competing goods, which cannot be a bona fide offering or a legitimate noncommercial or fair use.
iii) Respondent has engaged in bad faith registration and use. Respondent has offered to sell the domain name in bad faith under Policy ¶ 4(b)(i). Respondent is also attempting to commercially profit from a likelihood of confusion in bad faith under Policy ¶ 4(b)(iv). Lastly, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DAN BILZERIAN mark.
B. Respondent
Respondent failed to submit a formal Response to the Complaint. However, the Panel notes that in a document marked “Correspondence – Respondent” dated October 20, 2015, Respondent states, “[I] have never used this website for some commercial, and [I] will not, so you can give the domain name to them, because [I] do not want it/need it.”
The Panel also notes that <dantshirts.com> was registered on June 22, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant asserts common law rights in the DAN BILZERIAN trademark dating back to at least October 2014. The mark is in connection with the business, social and promotional ventures of Dan Bilzerian, a self-proclaimed world-famous poker player, actor, and internet social media personality. The mark is also used to sell memorabilia in the form of clothing, hats, costumes, and other goods that reflect the ventures of Complainant. The Panel notes that registration with a governmental entity or authority is not necessary to acquire rights in a trademark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
In order for a complainant to establish common law rights in a trademark under the Policy, they must show that the mark has acquired secondary meaning. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (holding that only through the establishment of secondary meaning can a complainant acquire common law rights in a trademark). Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Here, Complainant has provided screenshots from his social media accounts, as well as examples of merchandise containing the DAN BILZERIAN mark. Complainant has also provided a picture of an advertisement for his alleged presidential campaign. In regard to personal names specifically, prior panels have been willing to say that a complainant has established secondary meaning where the name has achieved notoriety with the public. See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”). Thus, as the Panel feels that this is sufficient to establish secondary meaning, it grants Complainant common law rights under the Policy.
Complainant argues that the <dantshirts.com> domain name is confusingly similar to the DAN BILZERIAN mark. Complainant notes that the domain name eliminates the “BILZERIAN” portion of the mark and adds the descriptive term “tshirts” along with the gTLD “.com.” As a general rule, the gTLD “.com” will never distinguish a domain name from the trademark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the domain name contained a word that was present in the mark at issue. See Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to the complainant’s marks, where the complainant holds many trademarks that contain the term “LEAFS”). The addition of descriptive terms has also been found to result in a confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Therefore, as the Panel views that the addition of “tshirts” and the removal of the “BILZERIAN” portion of the mark are inconsequential, it finds a confusing similarity for purposes of Policy ¶ 4(a)(i).
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 asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the DAN BILZERIAN mark in domain names. The Panel notes that “Tadeas Jílek” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the domain name is being used to sell counterfeit and competing goods. The Panel notes that the domain name resolves to a website that sells memorabilia containing the DAN BILZERIAN mark. Prior panels have declined to grant respondents rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name was used to sell counterfeit and/or competing goods. 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).”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Thus, the Panel declines to grant Respondent legitimate interests or rights under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering the domain name for sale. Complainant has provided a copy of an email it received from Respondent in which it is proposed the Complainant allow Respondent to continue using the disputed domain name, and in exchange Respondent will give Complainant a percentage of its profits from the sale of merchandise on its website. See Amended Compl., at Attached Ex. 14. Prior panels have found bad faith under Policy ¶ 4(b)(i) where the respondent tried to sell the domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). As the Panel finds that such is the case here, it finds bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain name resolves to a webpage that contains counterfeit and/or competing goods. Furthermore, Complainant believes that Respondent is presumably profiting from this use. The Panel notes that the domain name resolves to a website that sells memorabilia containing the DAN BILZERIAN mark. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to sell counterfeit or competing goods. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); 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). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant's rights in the DAN BILZERIAN mark. Complainant argues that Respondent's offering of counterfeit and/or competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. As the Panel infers from the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's mark and rights, it determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dantshirts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 26, 2015
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