DECISION

 

Brentwood Holding Group Inc. v. Joe Galway / TheMissing.ca

Claim Number: FA2008001908312

 

PARTIES

Complainant is Brentwood Holding Group Inc. (“Complainant”), represented by Alina Landver of LANDVER LAW CORPORATION, APC, California, USA. Respondent is Joe Galway / TheMissing.ca (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <flingsteralternative.com>, <flingstr.live> and <flngstr.com>, registered with Namespro Solutions Inc.; Name.com, Inc..

 

PANEL

The undersigned certifies that he 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 13, 2020; the Forum received payment on August 13, 2020.

 

On August 14, 2020, Namespro Solutions Inc.; Name.com, Inc. confirmed by e-mail to the Forum that the <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names are registered with Namespro Solutions Inc.; Name.com, Inc. and that Respondent is the current registrant of the names.  Namespro Solutions Inc.; Name.com, Inc. has verified that Respondent is bound by the Namespro Solutions Inc.; Name.com, 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 August 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@flingsteralternative.com, postmaster@flingstr.live, postmaster@flngstr.com.  Also on August 17, 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 September 14, 2020, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Brentwood Holding Group Inc. is the holding group for the Flingster adult video chat and adult dating company.

 

Complainant asserts rights in the FLINGSTER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).

 

 Respondent’s <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names are confusingly similar to Complainant’s mark, as they each incorporate the FLINGSTER mark either in its entirety or misspelled, merely adding the term “alternative” or deleting the letter “e” and/or “i” from the mark, along with adding the “.com” or “.live” generic top-level domain (“gTLD”).

 

Respondent lacks rights or legitimate interest in the flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names. Respondent is not commonly known by any of the at-issue domain names, nor has Complainant authorized Respondent’s use of the FLINGSTER mark. Additionally, Respondent fails to use any of the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to divert internet users to websites pretending to be sponsored by or affiliated with Complainant that offer competing services.

 

Respondent registered and uses the <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names in bad faith. Respondent uses the domain names to attract internet users for commercial gain through a likelihood of confusion with Complainant’s trademark and its offering of competing services. Additionally, Respondent had knowledge or Complainant’s marks, brands, and services when it registered the at-issue domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the FLINGSTER mark as demonstrated by its registration of such mark with the USPTO.

 

Complainant’s rights in the FLINGSTER mark existed prior to Respondent’s registration of the at-issue domain name.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent uses the at-issue domain names to divert internet users to websites pretending to be sponsored/affiliated with Complainant that offer competing services.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

The at-issue domain names are confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s ownership of a USPTO trademark registration for the FLINGSTER mark evidences Complainant’s rights in such trademark for the purposes of 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.”).

 

Additionally, the at-issue domain names each contain Complainant’s entire FLINGSTER trademark. In two of the domain names Complainant’s mark is misspelled; in the other domain name the term “alternative” is added. The domain names are concluded with either “.com” or “.live.” The differences between each of the at-issue <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names and Complainant’s trademark fail to distinguish any of Respondent’s domain names from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names are each confusingly similar to Complainant’s FLINGSTER trademark. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). See also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

 

Rights or Legitimate Interests

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 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 name.

 

WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Joe Galway” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by any of Respondent’s <flingsteralternative.com>, <flingstr.live>, or <flngstr.com> domain names. The Panel therefore concludes that Respondent is not commonly known by the any of the at-issue domain name 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 domain names address websites that mimic Complainant’s legitimate websites and offer services that compete with Complainant’s business. Using the confusingly similar domain names in this fashion indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also, H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) with regard to each domain name.

 

First as mentioned above with regard to rights and legitimate interests, Respondent uses the confusingly similar <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names to address websites that confuse internet users as to their sponsorship and ultimately compete with Complainant. Doing so disrupts Complainant’s business and indicates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”)

 

Moreover, Respondent had actual knowledge of Complainant’s rights in the FLINGSTER mark when it registered the <flingsteralternative.com>, <flingstr.live>, and <flngstr.com> domain names.  Respondent’s actual knowledge is evident from the notoriety of Complainant’s FLINGSTER trademark, from Respondent’s registration of multiple domain names embedding variants of Complainant’s FLINGSTER mark, and from the fact that the websites addressed by the at-issue domain names compete with Complainant. Registering and using a confusingly similar domain with knowledge of a 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).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <flingsteralternative.com>, <flingstr.live> and <flngstr.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  September 16, 2020

 

 

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