Tavik Holdings, LLC v. Marilyn Marion
Claim Number: FA1705001734084
Complainant is Tavik Holdings, LLC (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois. USA. Respondent is Marilyn Marion (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tavikswimwearusa.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2017; the Forum received payment on May 31, 2017.
On June 2, 2017, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <tavikswimwearusa.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 June 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2017 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@tavikswimwearusa.com. Also on June 2, 2017, 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 June 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant operates a clothing and mobile device accessories company where it manufactures accessories, carrying solutions, cables, chargers, etc. for the mobile device industry, as well as apparel and swimwear for both men and women.
Complainant registered the TAVIK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,012,193, registered Nov. 1, 2005).
Respondent’s <tavikswimwearusa.com> domain name is confusingly similar to Complainant’s TAVIK mark because it fully incorporates the mark and merely appends the descriptive word “swimwear,” the geographic term “usa,” and the generic top-level domain (”gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <tavikswimwearusa.com> domain name. Respondent is not commonly known by the TAVIK mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark for any purpose. Respondent also does not use the disputed domain for any bona fide offering of goods or services because it attempts to pass off as Complainant in order to commercially benefit from selling Complainant’s own products. Further, Respondent appears to engage in a phishing scam by accepting credit card information and then offering a discount to users to wire bank payments directly to Respondent.
Respondent registered and uses the <tavikswimwearusa.com> domain name in bad faith. Respondent attempts to pass off as Complainant, for financial gain, in order to confuse users into believing that Respondent and Complainant are somehow affiliated, or that Respondent is Complainant. Respondent capitalizes on this confusion to commercially benefit from offering competing goods. Further, Respondent engages in a phishing scam designed to obtain personal and financial information from <tavikswimwearusa.com> website users, as well as to potentially receive money directly from users. Finally, Respondent must have had actual or constructive knowledge of Complainant’s TAVIK mark because Respondent’s website is entirely based on Complainant’s products; Complainant registered its TAVIK mark ten years prior to the registration of the disputed domain name; and Respondent boldly displays Complainant’s mark and products on the resolving webpage for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO trademark registration for its TAVIK mark as well as numerous other registrations worldwide.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the TAVIK mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <tavikswimwearusa.com> domain name to address a website that poses as a website connected with Complainant and uses the false association to encourage users to give up propriety information.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the TAVIK mark with the USPTO establishes its rights in a mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “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.”).
Respondent’s <tavikswimwearusa.com> domain name contains Complainant’s TAVIK mark in its entirety, adds the generic terms “swimwear” and “usa” and appends the top level domain name “.com” thereto. Rather than differentiate the domain name from Complainant’s mark the use of the term “swimwear” suggests Complainant’s market, adding to any confusion. Likewise, Respondent’s addition of the term “usa” to Complainant’s is suggestive of a venue where Complainant conducts business. Further, it is generally established that the addition of a necessary top level domain name, here “com,” to complete a domain name is inconsequential to similarity analysis under the Policy. Therefore the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s TAVIK mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (FORUM July 23, 2011) (finding victoriassecret.com and victoriassecretswim.com confusingly similar); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Marilyn Marion” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar domain name to address a website dressed to look like it is authorized by Complainant. The website appears to offer’s Complainant goods for purchases online. When a potential customer tries to make an online purchase, Respondent responds by attempting to trick the accidental visitor into giving up his or her propriety banking information. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent’s confusingly similar domain name is used so that Respondent might pass itself off as Complainant and draw internet users to a website where it appears to offer Complainant’s products for sale. Indeed the <tavikswimwearusa.com> website prominently displays Complainant’s trademark and swimwear products. Such use of the domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4 (b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Additionally and as also mentioned above, Respondent’s registration and use of the domain name is in furtherance of a phishing scheme aimed at fraudulently extracting sensitive banking information from would be online customers. Respondent, via its confusingly similar domain name and website, dupes visitors to the <tavikswimwearusa.com> website into believing the website is sponsored by Complainant when it is not. Once visitors attempt to make an online purchase Respondent acts to have the would-be online customers divulge proprietary banking information to Respondent. Use of the domain name in this manner is disruptive to Complainant’s business and demonstrates bad faith per Policy ¶ 4(b)(iii). Indeed, Respondent’s phishing scheme is, in and of itself, evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was using the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).
Finally, Complainant’s TAVIK mark is well-known in the swimwear marketplace. In light of such notoriety, the use of the TAVIK mark and the term “swimwear” in the at-issue domain name, as well as Respondent’s prominent display of Complainant’s trademark and product pictures on the <tavikswimwearusa.com> website, there can be no doubt that Respondent was well aware of Complainant’s TAVIK mark when it registered and used the confusingly similar domain name. Clearly, Respondent registered and used the <tavikswimwearusa.com> domain name to inappropriately capitalize on Complainant’s TAVIK trademark rather than for some benign reason. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tavikswimwearusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 27, 2017
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