DECISION
Unknown AB v. Gabor Burnac / Cutts Media Kft
Claim Number: FA1807001795276
PARTIES
Complainant is Unknown AB (“Complainant”), represented by Inbrand AB, Sweden. Respondent is Gabor Burnac / Cutts Media Kft (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iamzlatan.com>, registered with DropCatch.com 561 LLC.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 5, 2018; the Forum received payment on July 5, 2018.
On July 9, 2018, DropCatch.com 561 LLC confirmed by e-mail to the Forum that the <iamzlatan.com> domain name is registered with DropCatch.com 561 LLC and that Respondent is the current registrant of the name. DropCatch.com 561 LLC has verified that Respondent is bound by the DropCatch.com 561 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 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2018 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@iamzlatan.com. Also on July 11, 2018, 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 August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant is a Swedish management company established to advertise, market, and manage Swedish professional soccer player Zlatan Ibrahimovic’s intellectual property portfolio for the ZLATAN mark. Complainant has rights in the ZLATAN mark based upon its trademark registrations with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 008209124, registered Feb. 1, 2010). See Compl. Annexure 1. Complainant also claims common law rights in the mark, dating back to at least 1999. Respondent’s <iamzlatan.com> domain name is confusingly similar to the ZLATAN mark as Respondent fully incorporates the mark, adds a generic term “I am”, and appends the “.com” generic top-level domain (“gTLD”). Complainant also contends the disputed domain name is identical to book title I AM ZLATAN published under license from Complainant.
2. Respondent lacks rights and legitimate interests in the <iamzlatan.com> domain name. Respondent is not authorized to use Complainant’s ZLATAN mark and is not commonly known by the disputed domain name. In fact, Respondent only registered the domain name after Complainant’s marketing agency inadvertently allowed its registration to lapse. Respondent fails to use the disputed domain name in connection with bona fide offering of goods and services or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a website that appears to be a factual blog about Zlatan Ibrahimovic, but also contains links to third-party gambling websites, presumably for Respondent’s commercial gain.
3. Respondent registered and uses the <iamzlatan.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users the disputed domain name where Respondent hosts what appears to be a blog about Zlatan Ibrahimovic, but also contains links to third party gambling websites. Additionally, Respondent previously used the disputed domain name to resolve to a website that copied Complainant’s website. Furthermore, Respondent had actual knowledge of Complainant’s rights in the ZLATAN mark prior to registering the disputed domain name.
B. Respondent
1. Respondent did not submit a Response.
FINDINGS
1. Respondent’s <iamzlatan.com> domain name is confusingly similar to Complainant’s ZLATAN mark.
2. Respondent does not have any rights or legitimate interests in the <iamzlatan.com> domain name.
3. Respondent registered or used the <iamzlatan.com> 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(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.”).
Identical and/or Confusingly Similar
Complainant claims to have rights in the ZLATAN mark based upon its registration of the mark with the EUIPO. Registering a mark with the EUIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Wente Bros. v. I S / ICS INC, FA 1739664 (Forum Aug. 18, 2017) (finding the complainant’s registration of its WENTE and WENTE VINYARDS marks with the EUIPO sufficient to establish rights in the marks). Complainant provides a copy of its mark’s registration with the EUIPO (e.g., Reg. No. 008209124, registered Feb. 1, 2010). See Compl. Annexure 1. Therefore, the Panel finds that the Complainant has rights in the ZLATAN mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <iamzlatan.com> domain name is confusingly similar to the ZLATAN mark because the disputed domain name contains the mark in its entirety, adds a generic term, and appends a gTLD. The addition of a generic term and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Respondent incorporates the entire ZLATAN mark in the disputed domain name plus the generic term “I am” and the “.com” gTLD. Accordingly, the Panel concludes that Respondent’s <iamzlatan.com> domain name is confusingly similar to Complainant’s mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <iamzlatan.com> domain name. Specifically, Complainant alleges Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the ZLATAN mark for any purpose. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent lacks rights or legitimate interests in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the relevant WHOIS information which identifies the Respondent as “Gabor Burnac / Cutts Media Kft”. Moreover, no information of the record indicates that Respondent was authorized to use Complainant’s ZLATAN mark. Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use the <iamzlatan.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant claims Respondent’s disputed domain name resolves to a blog website about Zlatan Ibrahimovic and features links to third-party websites. Complainant alleges Respondent generates revenue from referral fees when users are redirected to the third party, gambling websites. Use of a domain name to divert internet users to an unrelated third-party website for respondent’s pecuniary gain is not a bona fide offering of goods or services or a legitimate use noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots of the webpages associated with the disputed domain name and affiliated websites. See Complaint Annexures 12 and 14. Complainant claims Respondent attempts to confuse users into believing there is an association between Complainant and Respondent as the <iamzlatan.com> domain resolves to a website that is an identical copy of the Complainant’s website from September 20, 2017. Id. Accordingly, the Panel concludes that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Registration and Use in Bad Faith
Additionally, Complainant claims that Respondent previously attempted to mimic Complainant’s website in order to confuse users, presumably for commercial gain. Use of a disputed domain name to pass off as a complainant may indicate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides historical screenshots of the disputed domain name upon which Complainant claims Respondent used the same color scheme and photographs from Complainant’s <iamzlatan.se> domain name. See Amend. Compl. Annexures 8 and 11B. Therefore, the Panel finds Respondent attempted to pass off as Complainant, thus demonstrating bad faith per Policy ¶ 4(b)(iv).
Complainant also contends it previously owned the <iamzlatan.com> domain name, and Respondent only registered the name in bad faith to take advantage of Complainant’s failure to renew its registration. A respondent’s opportunistic bad faith can be inferred where the respondent registers a domain name previously owned by the complainant that the complainant allowed to lapse. See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”). Complainant claims the Swedish media group Albert Bonniers Förlag initially registered the <iamzlatan.com> domain name under license from Complainant to market and promote Complainant’s “I Am Zlatan” book in 2011, and that the media group allowed the domain name registration to lapse due to an administrative oversight around January 13, 2018. See Compl. Annexures 7–9. Respondent registered the domain name shortly after, on January 19, 2018. Complainant presumes this was done with a view either to committing fraud or ransoming the domain name back to Complainant. The Panel agrees the facts indicate Respondent opportunistically registered the domain name in bad faith per Policy ¶ 4(a)(iii) and so finds.
Furthermore, Complainant contends Respondent had actual knowledge and constructive notice of Complainant’s rights in the ZLATAN mark prior to registering the <iamzlatan.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge, but may instead find the facts indicate Respondent had actual knowledge of Complainant’s rights. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of the ZLATAN mark as the mark predates Respondent’s registration by nearly nine (9) years and Respondent’s use of the disputed domain name to host information about Complainant indicates actual knowledge. Further, Complainant contends Respondent’s registration of the domain name days after Complainant’s agent allowed its registration to lapse indicates knowledge of Complainant’s rights. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith 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 <iamzlatan.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 16, 2018
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