Airwirl, LLC v. Aden Arwood / Melon Mill?
Claim Number: FA1907001850665
Complainant is Airwirl, LLC (“Complainant”), represented by Sean D. Detweiler of Morse, Massachusetts, USA. Respondent is Aden Arwood / Melon Mill? (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theairwirl.com>, registered with Tucows Domains Inc., Tucows, Inc..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2019; the Forum received payment on July 2, 2019.
On July 2, 2019, Tucows Domains Inc., Tucows, Inc. confirmed by e-mail to the Forum that the <theairwirl.com> domain name is registered with Tucows Domains Inc., Tucows, Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc., Tucows, Inc. has verified that Respondent is bound by the Tucows Domains Inc., Tucows, Inc. 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 July 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@theairwirl.com. Also on July 9, 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 August 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the AIRWIRL mark in connection with portable heating and cooling apparatuses. Complainant has rights in the AIRWIRL mark through its registration of the mark with the multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,596,735, registered Oct. 30, 2018). See Compl. Ex. 3. The disputed domain name is identical or confusingly similar to Complainant’s mark as it is a complete and exact reproduction of Complainant’s mark with the added non-distinctive wording “the.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to copy Complainant’s website and redirect Internet users to unauthorized or counterfeit products made to look like Complainant’s products.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to misdirect Internet users to its own website where it offers for sale unauthorized counterfeit products made to look exactly like Complainant’s products. Respondent’s confusingly similar domain name constitutes typosquatting.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Respondent registered the disputed domain name on May 30, 2019.
2. Complainant has established rights in the AIRWIRL mark through its registration of the mark with the multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,596,735, registered Oct. 30, 2018).
3. The resolving webpage of the disputed domain name displays Complainant’s mark and photos of Complainant’s product with a “BUY NOW” option.
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”).
Complainant asserts rights in the AIRWIRL mark based on registration of the mark with multiple trademark agencies, including the USPTO. Registration of a mark with multiple trademark agencies is sufficient to establish rights in the mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant provides this Panel with copies of its registration with the USPTO (e.g. Reg. No. 5,596,735, registered Oct. 30, 2018). See Compl. Ex. 3. Thus, this Panel finds Complainant has rights in the AIRWIRL mark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s mark as is a complete and exact reproduction of Complainant’s mark with the added non-distinctive wording “the.” While not argues by Complainant, the Panel notes the disputed domain name also adds the generic top-level domain (gTLD) to Complainant’s mark. The addition of a generic term and a gTLD to a complainant’s mark is insufficient to differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or authorization to use the AIRWIRL mark or register domain names using Complainant’s mark. 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)”). The WHOIS information for the disputed domain name lists the registrant as “Arden Arwood/Melon Mill?,” and there is no other evidence to suggest that Respondent was authorized to use the AIRWIRL mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to copy Complainant’s website and redirect Internet users to unauthorized or counterfeit products made to look like Complainant’s products. Passing off as a complainant to attempt to sell counterfeit versions of a complainant’s goods may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also 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.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays Complainant’s mark and photos of Complainant’s product with a “BUY NOW” option. See Compl. Ex. 5. Complainant provides screenshots of Complainant’s own website for comparison. See Compl. Ex. 5. Therefore, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to misdirect Internet users to its own website where it offers for sale unauthorized counterfeit products made to look exactly like Complainant’s products. Passing off as a complainant to attempt to sell counterfeit versions of a complainant’s goods can demonstrate bad faith registration and use per Policy ¶¶ 4(b)(iii) or (iv). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). The Panel recalls Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays Complainant’s mark and photos of Complainant’s product with a “BUY NOW” option and screenshots of Complainant’s own website for comparison. See Compl. Ex. 5. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent’s registration of the disputed domain name constitutes typosquatting and is evidence of bad faith. Registration of a disputed domain name containing small typographical errors can constitute typosquatting and be evidence of 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 argues the disputed domain name contains an exact reproduction of Complainant’s mark. As the Panel agrees, it finds Respondent engages in typosquatting and thus registered the disputed domain name in bad faith per 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 <theairwirl.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 5, 2019
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