Flight Club New York LLC v. Margot Thomas / Restaurant les hockeyeurs
Claim Number: FA1903001836137
Complainant is Flight Club New York LLC (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, California, USA. Respondent is Margot Thomas / Restaurant les hockeyeurs (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flightclubins.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2019; the Forum received payment on March 27, 2019.
On March 27, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <flightclubins.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@flightclubins.com. Also on March 28, 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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a well-known sneaker reseller that, for over a decade, has changed the landscape of sneaker retail. Complainant has rights in the FLIGHT CLUB trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,531,860, registered Nov. 11, 2008). Respondent’s <flightclubins.com> domain name is confusingly similar to Complainant’s trademark as it merely adds the short additional term “ins” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <flightclubins.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 trademark. 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 pass off as Complainant and divert users to Respondent’s website where it sells counterfeit and/or competing goods.
Respondent registered and uses the <flightclubins.com> domain name in bad faith. Respondent uses the domain name to attract users to its own website to commercially benefit from the sale of counterfeit and/or competing goods, which disrupts Complainant’s business. Further, given the significant fame and notoriety associated with the mark, along with Respondent’s use of the domain name to display Complainant’s trademark and images, Respondent had actual knowledge of Complainant’s FLIGHT CLUB trademark when it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,531,860 FLIGHT CLUB (word), registered November 11, 2008 for goods in class 25;
No. 4,840,755 FLIGHT CLUB (word), registered October 27, 2015 for services in class 35.
Respondent registered the <flightclubins.com> domain name on January 30, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the FLIGHT CLUB trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 3,531,860, registered Nov. 11, 2008). Registration of a trademark 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 the FLIGHT CLUB trademark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <flightclubins.com> domain name is confusingly similar to Complainant’s trademark as it merely adds the short additional term “ins” along with the “.com” gTLD. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The Panel therefore finds that the <flightclubins.com> domain name is confusingly similar to the FLIGHT CLUB trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent has no rights or legitimate interests in the <flightclubins.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 trademark. 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). The WHOIS in the present case identifies “Margot Thomas / Restaurant les” 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 <flightclubins.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <flightclubins.com> domain name to pass off as Complainant and divert users to Respondent’s website where it sells counterfeit and/or competing goods. Unauthorized selling of a complainants’ products, whether real or counterfeit, can evince a lack of a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (“Using a confusingly similar domain name to offer counterfeit versions of a complainant’s goods and services is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of both the resolving webpage, as well as of its own webpage for comparison. The Panel finds that Respondent’s use of the domain name to offer Complainant’s goods fails to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent uses the <flightclubins.com> domain name to attract users to its own website to commercially benefit from the sale of counterfeit and/or competing goods, which disrupts Complainant’s business. Using a confusingly similar domain name to offer competing and/or counterfeit goods can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). Again, and referring to the screenshot of the resolving webpage, provided by the Complainant, which displays the FLIGHT CLUB trademark along with images of shoes allegedly for sale, is a clear indication supporting Complainant’s conclusion. The Panel therefore agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s trademark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the FLIGHT CLUB trademark at the time of registering the <flightclubins.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 given the significant fame and notoriety associated with the trademark along with Respondent’s use of the domain name to display Complainant’s trademark and images. The Panel at leased agree with Complainant that the actual use of the disputed domain - directly after the Respondent’s registration of <flightclubins.com> - clearly indicate that Respondent did have actual knowledge of Complainant’s trademark, thereby demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flightclubins.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 19, 2019
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