Flight Club New York LLC v. Camilla Almici
Claim Number: FA1903001835178
Complainant is Flight Club New York LLC (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, California, USA. Respondent is Camilla Almici (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2019; the Forum received payment on March 21, 2019.
On March 21, 2019 and March 25, 2019, Namesilo, Llc confirmed by e-mail to the Forum that the <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names are registered with Namesilo, Llc and that Respondent is the current registrant of the names. 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 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@flightclubhot.com, postmaster@flightshoesclub.com, postmaster@flightclubsolo.com. Also on March 26, 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 16, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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 mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names are confusingly similar to Complainant’s FIGHT CLUB mark as each domain name incorporates the mark along with the terms “hot,” “club,” or “solo,” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names. Respondent is not authorized to use Complainant’s FLIGHT CLUB mark and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the at-issue domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to pass off as complainant in order to sell counterfeit versions of Complainant’s goods.
Respondent registered and uses the <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names where it passes off as Complainant to sell counterfeit goods. Further, Respondent had actual knowledge of Complainant’s rights in the FLIGHT CLUB mark prior to registering and subsequent use of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FLIGHT CLUB mark through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the FLIGHT CLUB trademark.
Respondent uses the disputed domain names to pass off as complainant in order to sell counterfeit versions of Complainant’s 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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has a USPTO registration for its FLIGHT CLUB mark. Such registration is convincing evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names each contain Complainant’s FLIGHT CLUB trademark (less its space). In one domain name, the term “hot” is appended to the mark. In another, the term “shoes” is inserted between the two terms in Complainant’s trademark. In the third domain name, Complainant’s FLIGHT CLUB mark is followed by the term “solo.” Each domain name concludes with the top-level domain name “.com.” Importantly, in each case the differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names are each confusingly similar to one or more of Complainant’s trademarks. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
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, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 any of the at‑issue domain names.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Camilla Almici” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by any of the of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names 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’s confusingly similar <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names address a website designed to pass itself off as being sponsored by Complainant. There Respondent offers counterfeit versions of Complainant’s goods for sale. Using the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶ 4(a)(ii).
The at-issue domain names were registered and are being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to host a website designed to pass itself off as being sponsored by Complainant. Indeed, Respondent misappropriates the look and feel of Complainant’s website and uses Complainant’s proprietary intellectual propriety to fashion its fraudulent website. What’s more, Respondent’s website offers counterfeits of Complainant’s products for sale. Using the confusingly similar domain names in this manner shows bad faith per Policy ¶¶ 4(b)(iii) and (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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also, H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the FLIGHT CLUB trademark when it registered the <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and Respondent’s unauthorized use of such trademark to offer counterfeits of Complainant’s products as discussed above. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 had 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 <flightclubhot.com>, <flightshoesclub.com>, and <flightclubsolo.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 16, 2019
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