Icon, Inc. v. usman riaz
Claim Number: FA2006001901505
Complainant is Icon, Inc. (“Complainant”), represented by Mark C. Johnson of Johnson \ Dalal, United States. Respondent is usman riaz (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iconswim.store>, registered with Namecheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2020; the Forum received payment on June 23, 2020.
On June 24, 2020, Namecheap, Inc., Namecheap confirmed by e-mail to the Forum that the <iconswim.store> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, 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 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@iconswim.store. Also on July 1, 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 July 24, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has adduced evidence that it was founded in 2015 and claims that by June 2018 it began using the ICONSWIM trademark in commerce in connection with swimwear. Complainant filed a currently pending United States federal trademark application on June 5, 2020 for the standard character mark ICONSWIM.
Complainant refers to screenshots of its website on which it displays and promotes its swimwear products and offers downloads for mobile device applications promoting its products.
Complainant asserts that it has acquired common law rights in the ICONSWIM mark through such use dating back to at least 2018.
Complainant argues that the disputed domain name <iconswim.store> is confusingly similar to the ICONSWIM trademark in which Complainant has common law rights in because the disputed domain name contains the identical ICONSWIM mark therein.
Complainant submits that Respondent has no rights and legitimate interests in the disputed domain name.
Referring to the WhoIs information for the disputed domain name registration, Complainant alleges that Respondent is not commonly known by the disputed domain name or the ICONSWIM mark arguing that this is demonstrated by the fact that there is no such indication on the WHOIS information or otherwise in the record.
Complainant asserts that at no time has Complainant licensed or otherwise authorized Respondent to use the ICONSWIM mark. See Connections Academy, LLC v. bongjoosong, FA 1005001325725 (Forum July 29, 2010) (finding Respondent had no rights or legitimate interests where Complainant demonstrated that it had not licensed or otherwise authorized Respondent to use its mark in commerce).
Additionally referring to a screenshot of the website to which the disputed domain name resolves, which is adduced in evidence in an annex to the Complaint, Complainant submits that Respondent is not actively using the disputed domain name as it resolves to an inactive web page on which the following message appears: “404 Error – Page Not Found. Please check the URL. Otherwise, click here to be redirected to the homepage.” A user who clicks on the “click here” section, is redirected to the same inactive page.
Complainant argues that because no goods or services are offered, marketed, or advertised on the website to which the disputed domain name resolves it follows that no demonstrable preparations to use the disputed domain name have been made.
Complainant submits that Respondent’s inactive use of the disputed domain does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant further alleges that instead of putting it to active use, Respondent is using the disputed domain name as the address of an inactive website and is misdirecting Internet users and disrupting Complainant’s business by misleading Complainant’s prospective customers into believing that Complainant’s business is run via the inactive website.
Complainant adds that because the disputed domain name does not resolve to an active website and because Respondent’s conduct has disrupted Complainant’s business, Respondent’s registration and use of the disputed domain name has been done in bad faith. See Connections Academy, LLC v. bongjoosong, FA 1005001325725 (Forum July 29, 2010) (finding that “Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii)”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant produces and markets a range of women’s swimwear clothing products on which is uses the ICONSWIM mark.
On May 5, 2020, Complainant made an application to register ICONSWIM as a United States trademark which is dated May 6, 2020, claiming first use in commerce at least as early as June 13, 2018.
Complainant is the owner of the Internet domain name <iconswim.us> created on May 12, 2020 and has established an Internet presence with its website offering its swimwear products and downloads for Complainant’s mobile apps.
The disputed domain name was registered on May 22, 2020 and resolves to an inactive webpage.
There is no information available about Complainant, except for that provided in the Complaint, the Registrar’s WhoIs, and the information on record provided by the Registrar in response to the FORUM’s request for verification of the registration details for the disputed domain name.
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 has adduced convincing uncontested evidence that it has established common law rights in the ICONSWIM trademark acquired through its use of the mark in commerce, including on the Internet, and for which it has made United States federal trademark application dated June 6, 2020 for the standard character mark ICONSWIM.
The disputed domain name <iconswim.store> consists of Complainant’s ICONSWIM trademark in its entirety with no other element except for the <.store> generic Top Level Domain (gTLD) extension.
For the purposes of comparison the gTLD <.store> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is identical to the SWIMWEAR mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name, arguing
· that the WhoIs information for the disputed domain name registration shows that Respondent is not commonly known by the disputed domain name or the ICONSWIM mark;
· that at no time has Complainant licensed or otherwise authorized Respondent to use the identical ICONSWIM mark;
· that the website to which the disputed domain name resolves shows that Respondent is not actively using the disputed domain name as it resolves to an inactive web page on which the following message appears: “404 Error – Page Not Found. Please check the URL. Otherwise, click here to be redirected to the homepage” and that users who click on the sectioni indicated are circularly redirected back to the landing page as there is no such homepage;
· that no goods or services are actually offered, marketed, or advertised on the website to which the disputed domain name resolves;
· that no demonstrable preparations to use the disputed domain name have been made; and
· that Respondent’s inactive use of the disputed domain does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The Registrar’s WhoIs shows that the disputed domain name was registered on May 22, 2020. Complainant has adduced evidence that it had earlier applied to register the SWIMWEAR mark as a United States register on May 5, 2020 and the application has been dated May 6, 2020 by the USPTO. The trademark application claims first use in commerce at least as early as June 13, 2018.
This Panel finds therefore that on the balance of probabilities Complainant’s reputation and common law rights were established prior to the registration of the disputed domain name.
Furthermore, the disputed domain name is identical to Complainant’s distinctive ICONSWIM mark, and so, on the balance of probabilities the disputed domain name was chosen and registered in bad faith, intending to target and take predatory advantage of Complainant’s reputation and goodwill in the SWIMWEAR trademark.
The evidence shows that Respondent is passively holding the disputed domain name which resolves to an inactive webpage on which the following message appears: “404 Error – Page Not Found. Please check the URL. Otherwise, click here to be redirected to the homepage.” When a user clicks on the “click here” section, they are redirected to the same inactive page.
As has been stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), “lf]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.”
Among the relevant factors which a panel should consider include:” (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, the disputed domain name is identical to Complainant’s distinctive trademark and Respondent has made no response to the Complaint.
It is implausible that the disputed domain name would be put to any good faith use because both Complainant’s trademark and the identical disputed domain name are composed of the word “icon” and “swim”. While the combination of these two elements are distinctive of Complainant and its products, the word “swim” is descriptive of Complainant’s products and in the context of the present case, it is likely that to Internet users the <.store> gTLD would infer a retail use of the disputed domain name.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered and is being used in bad faith. Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED/DENIED.
Accordingly, it is Ordered that the <iconswim.store> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: July 24, 2020
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