Golden Frog, Inc. v. Zhuhai Yingxun Keji Limited
Claim Number: FA1611001703437
Complainant is Golden Frog, Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Zhuhai Yingxun Keji Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goldenfrogg.com>, registered with Eranet International Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 17, 2016; the Forum received payment on November 17, 2016.
On November 24, 2016, Eranet International Limited confirmed by e-mail to the Forum that the <goldenfrogg.com> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@goldenfrogg.com. Also on November 29, 2016, 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 December 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant uses the GOLDEN FROG mark in connection with its business developing and offering software products and solutions. Complainant has rights in the GOLDEN FROG mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,215,859, registered Oct. 2, 2012). Respondent’s domain name <goldenfrogg.com> is identical or confusingly similar to the GOLDEN FROG mark (without the space) as the domain name merely adds an extra letter “g” to the end of the mark and the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name at issue, nor licensed to use the mark in a domain name, or permitted to use the GOLDEN FROG mark. Further, Respondent’s domain name resolves to a website that offers virtual reality software featuring adult content which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Using the domain name to offer software services similar to those offered by Complainant demonstrates a bad faith attempt to confuse and attract internet users for commercial gain. Respondent’s use of a domain confusingly similar to Complainant’s GOLDEN FROG mark to host a website featuring adult content is a use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Golden Frog, Inc. c/o Maples Corp. Srvcs Ltd, Grand Cayman, Cayman Islands. Complainant is the owner of a USA registration for the mark GOLDEN FROG, which it has used continuously since at least as early as 2009 in connection with its provision of goods and services in the field of software development and production.
Respondent is Zhuhai Yingxun Keji Limited of Zhuhai, China. Respondent’s registrar’s address is listed as Hong Kong, China. The Panel notes that the disputed domain name was created on or about June 14, 2016.
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(f), 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 (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 claims to have rights in the GOLDEN FROG mark based on registration of the mark with the USPTO (Reg. No. 4,215,859, registered Oct. 2, 2012). Past panels have found that registration of a mark with the USPTO is sufficient to demonstrate a registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the mark.
Complainant claims that Respondent’s domain name is confusingly similar to the GOLDEN FROG mark. Respondent’s domain name includes the entire GOLDEN FROG mark and differs only by the addition of an extra letter “g” and the gTLD “.com.” Prior panels have found that adding a letter to a mark in a domain name does not alleviate similarity between a domain name and a mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (stating that the <blankofamerica.com> domain name is confusingly similar to the complainant’s BANK OF AMERICA trademark because, by adding the letter “l,” the domain name amounts to a common misspelling of the trademark). Panels have also found that the addition of the gTLD “.com” is irrelevant to an analysis of confusing similarity for purposes of Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel here finds that Respondent’s disputed domain name is confusingly similar to the GOLDEN FROG mark for purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the domain name at issue, nor licensed to use the mark in a domain name, or permitted to use the GOLDEN FROG mark. Respondent has provided no WHOIS information or other evidence to contradict Complainant’s assertions.
Complainant contends, and has provided evidence in support of its claim, that Respondent’s domain name resolves to a website that advertises adult virtual reality software. Complainant believes that Respondent’s use tarnishes the goodwill associated with its mark through such use. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Complainant also notes that Respondent has incorporated Complainant’s logo at the top of each page and omitted the double “g” in the domain name to mirror Complainant’s GOLDEN FROG mark on the resolving website, which add to the presumption that Respondent is attempting to pass itself off as Complainant. See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). The Panel here finds that Respondent is not using the <goldenfrogg.com> domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interests in the disputed domain name.
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <goldenfrogg.com> domain name in bad faith. Complainant claims that Respondent is attempting to commercially gain in bad faith by Internet users’ likelihood of confusion of the domain name with Complainant’s GOLDEN FROG mark. Complainant presumes that Respondent is commercially gaining from the virtual reality adult-oriented material being advertised on the resolving page of the disputed domain name. The Panel notes Complainant’s prior allegations regarding Respondent’s alleged use of the domain name. Prior panels have found that a respondent’s advertisements can violate Policy ¶ 4(b)(iv) where the respondent is attempting to appropriate the goodwill in a complainant’s mark. See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel here finds that Respondent’s registration and use of <goldenfrogg.com> is in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant next argues that Respondent’s featuring of adult-oriented material on <goldenfrogg.com> is bad faith in itself under Policy ¶ 4(a)(iii). The Panel notes Complainant’s submissions of Respondent’s website at the disputed domain name that advertises a virtual reality adult-oriented product. Prior panels have found that a respondent is in bad faith where they use a confusingly similar domain name to divert Internet users to websites with adult-oriented material. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel here finds that the evidence provided supports the conclusion that Respondent is featuring adult-oriented material, and that this use of the disputed domain name constitutes a bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent has committed bad faith by typosquatting on its GOLDEN FROG mark. Complainant asserts that adding an extra “g” to its mark is a common typographical error and that Respondent purposely registered the <goldenfrogg.com> domain name knowing this fact. Previous panels have found that the deliberate misspelling of a complainant’s mark constitutes bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). The Panel here finds that Respondent is typosquatting on Complainant’s mark resulting in Respondent’s actions constituting bad faith use and registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <goldenfrogg.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 5, 2017
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