Narwhaler LLC v. Truonng Duc
Claim Number: FA2009001911352
Complainant is Narwhaler LLC (“Complainant”), represented by Dionne Heard of Gerben Law Firm, PLLC, District of Columbia, USA. Respondent is Truonng Duc (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chummytees.net>, registered with Namesilo, Llc; 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2020; the Forum received payment on September 4, 2020.
On September 8, 2020, Namesilo, Llc; NameSilo, LLC confirmed by e-mail to the Forum that the <chummytees.net> domain name is registered with Namesilo, Llc; NameSilo, LLC and that Respondent is the current registrant of the name. Namesilo, Llc; NameSilo, LLC has verified that Respondent is bound by the Namesilo, Llc; 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 September 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2020 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@chummytees.net. Also on September 9, 2020, 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 October 2, 2020, 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, Narwhaler LLC, owns and operates a website selling unique t-shirts. Complainant asserts rights in the CHUMMY TEES mark through its registration of the mark with the united States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 6036353, registered on April 21, 2020.) and its use since 2016. See Compl. Ex. B. Respondent’s <chummytees.net> domain name is confusingly similar to Complainant’s mark, as it incorporates the mark in its entirety and merely adds the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <chummytees.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the CHUMMY TEES mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent uses the domain name to divert Internet users to a website where Respondent sells competing goods.
Respondent registered and uses the <chummytees.net> domain name in bad faith. Respondent targeted the CHUMMY TEES mark to create a likelihood of confusion for their own profit and disrupt Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and operates a website selling unique t-shirts.
2. Complainant has established its registered trademark rights in the CHUMMY TEES mark through its registration of the mark with the united States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 6036353, registered on April 21, 2020) and common law trademark rights through its use of the mark since 2016.
3. Respondent registered the disputed domain name on October 28, 2018.
4. Respondent uses the domain name to divert Internet users to a website where Respondent sells competing goods.
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”).
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 rights in the CHUMMY TEES mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under 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).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. no. 6,036,353, registered on April 21, 2020.) See Compl. Ex. B. Therefore, the Panel finds that Complainant has registered trademark rights in the mark under Policy ¶ 4(a)(i).
Complainant also submits it has used the CHUMMY TEES mark in connection with t-shirts, sweatshirts, and tank tops since 2016. Rights in a mark may also be established through use of the mark in commerce such that the mark has generated 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 argues its corporation was formed in 2010 and it has used the mark in connection with t-shirts, sweatshirts, and tank tops since 2016. Complainant provides proof of the resolving webpage of Complainant's own website. See Compl. Ex. A. The Panel finds that the foregoing evidence is sufficient to establish common law trademark rights in the CHUMMY TEES mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHUMMY TEES mark. Complainant argues that Respondent’s <chummytees.net> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name incorporates the CHUMMY TEES mark in its entirety and merely adds the “.net” gTLD. Use of a gTLD does not mitigate the confusing use of a trademark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”) Therefore, the Panel finds the disputed domain name is identical to Complainant’s mark per 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”).
(a) Respondent has chosen to take Complainant’s CHUMMY TEES trademark and to use it in its domain name in its entirety;
(b) Respondent registered the disputed domain name on October 28, 2018;
(c) Respondent uses the domain name to divert Internet users to a website where Respondent sells competing goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <chummytees.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHUMMY TEES mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “Truonng Duc” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain name. See Compl. Ex. D. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant claims respondent fails to use the <chummytees.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because respondent uses the domain name to divert Internet users to a competing website. Using a website to direct Internet users to a website that sells competing goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of Respondent’s webpage which appears to sell t-shirts that are very similar to Complainant’s own products. See Compl. Ex. E. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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 argues Respondent registered and uses the <chummytees.net> domain name in bad faith because Respondent’s use of Complainant’s mark signals an intent to deceive, which is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Complainant argues that Respondent intentionally targeted the CHUMMY TEES mark to create a likelihood of confusion in order to attract Internet users familiar with Complainant for their own financial gain. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent’s use of the <chummytees.net> domain name to sell competing goods is evidence of bad faith. Use of a domain name to attract Internet users to a website where competing goods are sold is evidence of bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). As previously noted, Complainant provides a screenshot of Respondent’s webpage which appears to sell t-shirts that are very similar to Complainant’s own products. See Compl. Ex. E. The panel finds such use in bad faith under Policy ¶ 4(b)(iv).
The Panel also notes that although registration of the domain name on October 28, 2018 occurred prior to the registration date of the trademark, namely on April 21, 2020, it occurred after Complainant’s common law rights in the trademark had been established in 2016. Consequently Respondent registered the disputed domain name in bad faith.
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 <chummytees.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 5, 2020
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