Flight Club New York LLC v. (Name Redacted)
Claim Number: FA1903001836155
Complainant is Flight Club New York LLC (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, California, USA. Respondent is (Name Redacted) (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flightclubeu.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.
Paddy Tam 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 <flightclubeu.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 April 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@flightclubeu.com. Also on April 1, 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.
A timely Response was received and determined to be complete on April 20, 2019.
On April 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paddy Tam 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Flight Club New York LLC, uses their FLIGHT CLUB mark in connection with clothing, sneaker, and retail store services. Complainant has rights in the FLIGHT CLUB mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”)
l FLIGHT CLUB
U.S. Registration No. 3,531,860
Registered November 11, 2008
Date of first Use: April 19, 2008
Goods: Clothing, namely, caps, hats, headwear, jackets, pants, shirts, t-shirts, tank tops, and socks, in International Class 25
l FLIGHT CLUB
U.S. Registration No. 4,840,755
Registered October 27, 2015
Date of first use: April 2005
Goods: Retail store services featuring footwear, clothing, sunglasses, and watches, in International Class 35
Respondent’s <flightclubeu.com> domain name is confusingly similar to Complainant’s FLIGHT CLUB mark, as it incorporates the mark in its entirety, adding only the generic or descriptive term “eu.”
2. Respondent has no rights or legitimate interests in the <flightclubeu.com> domain name. Respondent is not commonly known by the disputed domain name, nor has it been authorized to use the FLIGHT CLUB mark in any manner. 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. Rather, Respondent is using the disputed domain name to pass off as Complainant in order to offer what appear to be counterfeits of Complainant’s goods. Further, Respondent uses the domain name to fraudulently acquire users’ personal and financial information.
3. Respondent is using the <flightclubeu.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting users to a website where it passes off as Complainant to sell competing or counterfeit goods for commercial gain. Further, Respondent had actual knowledge of Complainant’s rights in the FLIGHT CLUB mark prior to registering the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions, but submitted communication on April 10, 2019 and April 20, 2019, denying any affiliation with the domain name.
1. The domain name had been fraudulently registered by using the name and address of the Respondent;
2. The domain name at issue is confusingly similar to Complainant’s FLIGHT CLUB Trademarks;
3. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name; and
4. Respondent registered and has used the 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.
The Respondent claims his name and address had been used to register the domain name fraudulently and denies any affiliation with the domain name.
In light of the potential identity theft, the Panel has decided to redact the Respondent’s name and contact information from this Decision in accordance with Policy ¶ 4(j) and Forum Supplemental Rule ¶ 15(b). See S&C Electric Company v. sandc india / [redacted], FA1412001592719 (Forum Jan. 2, 2015) (“Since Respondent’s Intermediary is not the true party in interest, its name has been redacted from the caption of this decision and is not mentioned elsewhere in this decision for its protection, being merely referred to as Respondent’s Intermediary.”); see also Casale Media, Inc. v. (Name redacted) / PERFECT PRIVACY, LLC, FA1610001696719 (Forum Nov. 10, 2016).
To satisfy the first element under Policy ¶ 4(a), a Complainant needs to prove its rights in a trademark and the domain name is identical and/or confusingly similar to the trademark.
First, the Complainant claims rights in the FLIGHT CLUB mark through its registrations of the Trademarks with the USPTO (e.g. Reg. No. 3,531,860, registered Nov. 11, 2008). By virtue of its federal trademark registrations, Complainant has proved that it has rights in the mark under Policy ¶ 4(a). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel accepts that the Complainant has the registered Trademark rights in the FLIGHT CLUB mark.
Second, the Complaint claims that the additional generic or descriptive term “eu” does not distinguish the domain name from Complainant’s FLIGHT CLUB trademark. The Panel accepts that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity and it does not sufficiently differentiate the disputed domain name from that trademark. In addition, the Panel also finds that the “.com” generic top-level domain (“gTLD”) is irrelevant when establishing whether or not a mark is identical or confusingly similar for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(i).
To satisfy the second element under Policy ¶ 4(a), the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the domain name, and the burden of prove then shifts to the 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”).
First, the Complainant contends that Respondent has no rights or legitimate interests in the <flightclubeu.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has it been authorized to use the FLIGHT CLUB mark in any manner. 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.”). There is no 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 <flightclubeu.com> domain name under Policy ¶ 4(c)(ii).
Second, the Complainant argues that Respondent is using the disputed domain name to pass off as Complainant in order to offer what appear to be counterfeits of Complainant’s goods. Using a confusingly similar domain name to pass off as a complainant and offer counterfeit products evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”); see also 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.”). Complainant provides a screenshot of the resolving webpage, which displays the FLIGHT CLUB mark and various images of sneakers for sale. Complainant also provides a screenshot of its own website for comparison purposes. Complainant alleges that the goods offered on Respondent’s website are counterfeit given the heavily discounted prices. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant to offer counterfeit goods, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Third, Complainant argues that Respondent uses the domain name to fraudulently acquire users’ personal and financial information by mimicking Complainant’s official website. Phishing schemes evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Complainant also alleges that Respondent does not actually sell the products listed on the webpage and instead purports to sell the products to acquire users’ personal and financial information. As such, the Panel agrees that Respondent’s use of the domain name in connection with a fraudulent phishing scheme fails to indicate a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted the assertion.
For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(ii).
To satisfy the third element under Policy ¶ 4(a), the Complainant must prove both the registration and use of the domain name are in bad faith.
First, the Complainant argues that Respondent had actual knowledge of Complainant’s rights in the FLIGHT CLUB mark at the time of registering the <flightclubeu.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name evinces 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 mark was heavily promoted and publicized at the time Respondent registered the domain name in March 2019, and as shown by Respondent’s attempts to pass off as Complainant on the resolving webpage. The Panel also notes that the domain name was registered 17 years after the registration of Complainant’s primary domain name <flightclub.com> and 11 years after the registration of Complainant’s FLIGHT CLUB trademark.
The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Second, the Complainant asserts that the Respondent intentionally uses the domain name to create a likelihood by copying the logo and type font of Complainant’s FLIGHT CLUB Mark and using copied product and store photographs, headings, and other indicia (such as a misleading copyright notice). In addition, the Respondent further disrupts Complainant’s business by diverting potential customers to its site selling competing goods. 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 evinces 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 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 a screenshot of the resolving webpage, which displays the FLIGHT CLUB mark and various images of sneakers for sale. Complainant also provides a screenshot of its own website for comparison purposes. Complainant alleges that the goods offered on Respondent’s website are counterfeit given the heavily discounted prices. Accordingly, the Panel agree that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
For the foregoing reasons, the Panel finds the Complainant has satisfied 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 <flightclubeu.com> domain name be TRANSFERRED from Respondent to Complainant.
Paddy Tam, Panelist
Dated: April 26, 2019
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