FLW, LLC v. Troy Aldrich
Claim Number: FA1903001833515
Complainant is FLW, LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Troy Aldrich (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flwcup.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2019; the Forum received payment on March 11, 2019.
On March 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <flwcup.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 March 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2019 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@flwcup.com. Also on March 12, 2019, 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 April 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is the world’s largest tournament-fishing organization and now serves bass anglers of all skill levels from coast to coast in the United States and internationally in eight (8) countries. Complainant has rights in various marks incorporating the term FLW, including FLW TOUR (e.g. Reg. No. 2,246,741, registered May 18, 1999) and FLW (e.g. Reg. No. 4,219,426, registered Oct. 2, 2012) through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. 1. Complainant also has common law rights in the FLW CUP mark through its use of the mark in connection with its services for numerous years. Respondent’s <flwcup.com> domain name is confusingly similar to Complainant’s marks as it incorporates the FLW and FLW CUP marks in their entirety and simply adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <flwcup.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to offer competing advertisement links. See Compl. Ex. 15.
Respondent registered and uses the <flwcup.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting users away from Complainant’s website and to Respondent’s where it offers competing hyperlinks. See Compl. Ex. 15. Additionally, Respondent registered the domain name using false WHOIS information. Further, Respondent had actual knowledge of Complainant’s marks prior to registering the domain name as shown by the registration of a domain name incorporating the FLW mark followed by the term “cup” and the FLW CUP mark and the use of the domain name to offer competing links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the world’s largest tournament-fishing organization.
2. Complainant has established its trademark rights in various marks incorporating the term FLW, including FLW TOUR (e.g. Reg. No. 2,246,741, registered May 18, 1999) and FLW (e.g. Reg. No. 4,219,426, registered Oct. 2, 2012), through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). Complainant has also established common law trademark rights in the FLW CUP mark prior to the registration of the disputed domain name.
3. Respondent registered the <flwcup.com> domain name on January 13, 2011.
4. Respondent uses the disputed domain name to offer competing advertisement links.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the FLW mark through its registration of the mark with the USPTO (Reg. No. 4,219,426, registered on Oct. 2, 2012). See Compl. Ex. 1 (hereinafter referred to as “Complainant’s FLW mark”). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in Complainant’s FLW mark for the purposes of Policy ¶ 4(a)(i).
Complainant also submits that it holds common law rights in the FLW CUP mark and does not currently hold a trademark registration for that mark. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides an article dating back to August 15, 2008 titled “FLW Cup report” to demonstrate the use of the mark in commerce. See Compl. Ex. 11. Complainant submits that it has developed substantial goodwill and customer loyalty under the distinctive and widely recognized FLW CUP mark and the Panel accepts that evidence. As such, the Panel finds that Complainant holds common law rights in the FLW CUP mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <flwcup.com> domain name is confusingly similar to Complainant’s FLW and FLW CUP marks as it incorporates the FLW and FLW CUP marks in their entirety and simply adds the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <flwcup.com> domain name is both identical to the FLW CUP mark and confusingly similar to Complainant’s FLW mark, under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FLW and FLW CUP trademarks and to use them in its domain name;
(b) Respondent registered the <flwcup.com> domain name on January 13, 2011;
(c) Respondent uses the disputed domain name to offer competing advertisement links;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <flwcup.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Troy Aldrich” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <flwcup.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent uses the domain name to offer competing advertisement links. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpage, which displays links such as “FLW Bass Fishing Tournament” and “Fishing Charters Area.” See Compl. Ex. 15. Accordingly, the Panel agrees and finds that Respondent’s use of the domain name to offer competing hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent disrupts Complainant’s business by diverting users away from Complainant’s website and to Respondent’s website where it offers competing hyperlinks. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel notes that Complainant provides a screenshot of the resolving webpage, which displays links such as “FLW Bass Fishing Tournament” and “Fishing Charters Area.” See Compl. Ex. 15. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and has attempted to benefit off Complainant’s mark commercially in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in Complainant’s FLW and FLW CUP marks at the time of registering the <flwcup.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred as shown by the registration of a domain name incorporating Complainant’s FLW and FLW CUP marks and the use of the domain name to offer competing links. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s marks, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s FLW and FLW CUP marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flwcup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 3, 2019
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