The Friedkin Group, Inc. v. Giovanni
Claim Number: FA1901001825990
Complainant is The Friedkin Group, Inc. (“Complainant”), represented by Emily A. Bayton of Lewis Roca Rothgerber LLP, Colorado, USA. Respondent is Giovanni (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frledkin.com>, registered with Google 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2019; the Forum received payment on January 18, 2019.
On January 22, 2019, Google LLC confirmed by e-mail to the Forum that the <frledkin.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 January 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@frledkin.com. Also on January 23, 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 February 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 consortium of automotive, hospitality, entertainment, golf, and adventure companies that dates back to the establishment of Gulf States Toyota in 1969. Complainant and its related company have used the FRIEDKIN mark since as early as 1997. Complainant has been providing executive management and consulting services since 2010. Complainant has common law rights in the FRIEDKIN mark based on its continuous and exclusive use throughout the United States since at least 1969. Respondent’s <frledkin.com> domain name is confusingly similar to Complainant’s mark because Respondent merely replaced the “i” in Complainant’s mark with an “l,” creating a common misspelling of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
Respondent lacks rights or legitimate interest in the <frledkin.com> domain name because Respondent is not commonly known by the disputed domain name and Respondent has not been authorized to use Complainant’s mark or register domain names containing Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because Respondent fails to make active use of the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith because Respondent fails to make active use of the disputed domain name. Respondent also engaged in typosquatting when it registered the confusingly similar domain name. Finally, given Complainant’s exclusive and widespread use of the mark, it is not possible to conceive of a use by Respondent that would not infringe on Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a consortium of automotive, hospitality, entertainment, golf, and adventure companies that dates back to the establishment of Gulf States Toyota in 1969. Complainant and its related company have used the FRIEDKIN mark since as early as 1997. Complainant has been providing executive management and consulting services since 2010. Complainant has common law rights in the FRIEDKIN mark based on its continuous and exclusive use throughout the United States since at least 1969. Respondent’s <frledkin.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <frledkin.com> domain name on November 15, 2018.
Respondent lacks rights or legitimate interest in the <frledkin.com> domain name. Respondent fails to make active use of the disputed domain name.
Respondent registered and uses the disputed 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.
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.”).
Complainant has common law rights in the FRIEDKIN mark based on its continuous and exclusive use of the mark since as early as 1969. Evidence of long time, continuous use of a mark, significant advertising expenditures, and other evidence of the mark having acquired secondary meaning are sufficient to demonstrate a complainant’s common law rights in a mark. 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 has expended substantial amounts of time, money, and effort promoting its goods and services, and Complainant has acquired substantial recognition and goodwill throughout the United States. Therefore, Complainant has established common law rights in the FRIEDKIN mark.
Respondent’s <frledkin.com> domain name is confusingly similar to Complainant’s FRIEDKIN mark because Respondent adds the “.com” gTLD and creates a common misspelling of Complainant’s mark by replacing the “i” with an “l.”
Respondent lacks rights or legitimate interest in the <frledkin.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Giovanni.” Complainant has not authorized Respondent to use Complainant’s FRIEDKIN mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Therefore, Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails use the <frledkin.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or (iii) as the disputed domain name does not resolve to an active webpage.
Respondent registered and uses the <frledkin.com> domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent fails to make an active use of the disputed domain name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Further, Respondent engaged in typosquatting, because Respondent replaced the letter “i" in Complainant’s mark with the letter “l” in the <frledkin.com> domain name, which is evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <frledkin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 20, 2019
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