Young PS Acquisitions, LLC v. Junior Ablefonlin / Plaker-Smack
Claim Number: FA2002001885586
Complainant is Young PS Acquisitions, LLC (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, United States. Respondent is Junior Ablefonlin / Plaker-Smack (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plaker-smack.com>, registered with Tucows Domains 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2020; the Forum received payment on February 25, 2020.
On February 25, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <plaker-smack.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@plaker-smack.com. Also on March 2, 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 March 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On March 30, 2020, the Panel issued an Order For Additional Submissions And Extending Time For Rendering A Decision. In response thereto, an Additional Submission was received from the Complainant on April 1, 2020.
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 in the business of the manufacturing and marketing of supplies and equipment used by dentists, dental hygienists, dental assistants, and consumers. Complainant has rights in the trademark PLAK SMACKER through its use in commerce dating back more than thirty years and its registration with the United States Patent and Trademark Office (“USPTO”) dating to 1993. Respondent’s <plaker-smack.com> domain name, registered on October 5, 2019, is confusingly similar to Complainant’s PLAK SMACKER mark. Respondent moves the “ER” from the term “SMACK” to the term “PLAK” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <plaker-smack.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize or license Respondent to use the PLAK SMACKER mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to an inactive webpage.
Respondent registered and used the <plaker-smack.com> domain name in bad faith as Respondent attempts to disrupt Complainant’s business. Respondent also engages in the practice of typosqautting. Respondent has failed to make an active use of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the PLAK SMACKER mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
In response to the Panel’s invitation for the Complainant to submit additional evidence that supports the claim that the PLAK SMACKER mark has become widely recognized and achieved recognition and goodwill, Complainant provided additional submissions in the form of printouts from the <plaksmacker.com> website discussing the brand’s extensive history; a copy of the Notice of Acceptance for Combined Declaration of Use & Incontestability under Sections 8 & 15 for U.S. Trademark Registration No. 1,806,165 for PLAK SMACKER; and Copies of representative articles discussing Complainant and its marks.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 claims to have rights in the PLAK SMACKER mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the PLAK SMACKER mark. Therefore, the Panel finds that Complainant has adequately shown rights in the PLAK SMACKER mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <plaker-smack.com> domain name is confusingly similar to Complainant’s PLAK SMACKER mark. Registration of a disputed domain name that includes a complainant’s mark and moves two letters from one word to another does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (“Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i).) Here, Complainant argues that Respondent’s moving the “ER” from the term “SMACK” to the term “PLAK” and adding the “.com” gTLD does not alleviate the confusing similarity of the <plaker-smack.com> domain name with its mark. The Panel agrees and finds that Respondent’s 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 that Respondent lacks rights and legitimate interests in the <plaker-smack.com> domain name because Respondent is not authorized or permitted to use Complainant’s PLAK SMACKER mark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by, and thus may have rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that 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). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, it was held that the respondent is not commonly known by the disputed domain name). The WHOIS information for the disputed domain name identifies the registrant as “Junior Ablefonlin / Plaker-smack” but Respondent has not participated in this case and so provides no evidence in support of this identity. Further, no evidence in the record suggests that Respondent is authorized to use the PLAK SMACKER mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to an inactive webpage. Failure to make an active use of a disputed domain name for a significant period of time after acquiring the name (i.e., passive holding) is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under 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 <plaker-smack.com> domain name’s resolving webpage that shows a privacy error and no other information pertaining to using the domain name. Therefore, as the disputed domain name has not been used since its registration, at least four months prior to the filing of the Complaint, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that, based upon its “ownership of U.S. registrations for the PLAK SMACKER mark”, Respondent had constructive notice of Complainant’s rights in such mark at the time of registering the <plaker-smack.com> domain name. The Panel will disregard arguments of knowledge based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge except in rare circumstances where both parties reside in a jurisdiction that recognizes such legal theory. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, the Respondent appears to be based in Canada and the Panel is not aware that the law of such jurisdiction applies the theory of constructive notice with respect to United States trademark registrations.
The Panel will, however, consider whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Complaint itself mentions “continuous and widespread use of the Marks” and claims that “[a]s a result of their long history and nationally renowned products, Complainant’s Marks have acquired significant goodwill”. An annex to the Complaint entitled “Sample printouts from Complainant’s websites demonstrating use of its Marks” consists of two screenshots of Complainant’s website – one displaying many of its brands, including PLAK SMACKER, and a second page devoted solely to PLAK SMAKER products. In response to the Panel’s Order For Additional Submissions, Complainant has submitted into evidence additional pages from its website setting out the history and further detail about the claimed mark as well as copies of representative articles which discuss Complainant and its PLAK SMAKER mark. Further, the mark PLAK SMAKER appears to be quite unique and the <plaker-smack.com> domain name is a very close variation of such mark with its unusual transposition of letters. It seems most likely that the disputed domain name was created, not independently, but with reference to Complainant’s mark.
Finally, Complainant points out that its United States trademark registration for the mark “has been continuously registered for more than two decades and has achieved ‘incontestable’ status” thus indicating that it is “conclusive evidence” that Complainant “is the owner of such mark and has the “exclusive right” to use the mark for the registered goods.” However, Complaint appears to confuse proof of rights, which is relevant to Policy ¶ 4(a)(i), with evidence of reputation sufficient to support a claim of presumed knowledge by Respondent which is relevant to Policy ¶ 4(a)(iii).
In light of all the evidence provided and in the absence of any reply or other submission by the Respondent, the Panel determines it to be more likely than not that Respondent had actual knowledge of Complainant’s right in its mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent has failed to make an active use of the <plaker-smack.com> domain name. Failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). 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).”). Here, Complainant provides a screenshot of Respondent’s <plaker-smack.com> domain name’s resolving webpage that shows a privacy error and no other information pertaining to using the domain name. It further asserts that no use has been made of the disputed domain name in the four months since it was registered. In line with prior UDRP decisions, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii) by failing to make any use of it.
Complainant also argues that Respondent engages in the practice of typosqautting. Typosqautting involves using a complainant’s mark with minor typographical errors introduced and may be evidence of bad faith per 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). Here, Complainant argues that Respondent uses its PLAK SMACKER mark and takes the “ER” from the term “SMACK” and adds it to the term “PLAK” to create the <plaker-smack.com> domain name. The Panel agrees and finds that Respondent’s use of typosquatting provides further evidence that it registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered and used the <plaker-smack.com> domain name in bad faith as Respondent attempts to disrupt Complainant’s business. Registering and using of a disputed domain name to disrupt the business of a competitor may be evidence of bad faith per Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Here, it is argued that Respondent makes use of the confusingly similar domain name “primarily to disrupt Complainant’s business.” As bad faith has already been found on other grounds, the Panel declines to make a finding here that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(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 <plaker-smack.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 2, 2020
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