White Tiger Corporation v. John Vles
Claim Number: FA2105001945658
Complainant is White Tiger Corporation (“Complainant”), represented by John Gutekunst, California, USA. Respondent is John Vles (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whitetigerworld.com>, registered with Wild West Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2021; the Forum received payment on May 19, 2021.
On May 20, 2021, Wild West Domains, Llc confirmed by e-mail to the Forum that the <whitetigerworld.com> domain name is registered with Wild West Domains, Llc and that Respondent is the current registrant of the name. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 May 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2021 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@whitetigerworld.com. Also on May 25, 2021, 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 June 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant is the owner and operator of a Kung Fu school based in San Diego, California. Complainant has common law rights in the WHITE TIGER mark.
Respondent has no rights or legitimate interest in the <whitetigerworld.com> domain name, as Respondent purchased the domain name after the owner of Complainant accidently let the registration of the disputed domain name lapse. Respondent was a former student at the Kung Fu school
Respondent registered and uses the <whitetigerworld.com> domain name in bad faith. Specifically, Respondent maybe attempting to sell the disputed domain name back to Complainant. Respondent sought to disrupt Complainant’s business by preventing Complainant from using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which is the owner and operator of a Kung Fu school based in San Diego, California.
2. Complainant has established its common law trademark rights in the WHITE TIGER mark and that it held those rights prior to the registration of the domain name by the Respondent.
3. Respondent registered the <whitetigerworld.com> domain name on January 3, 2005 when the owner of Complainant which was the true owner of the domain name and its former registrant, was ill and omitted by oversight to re-register the domain name.
4. Respondent has sought to disrupt Complainant’s business by preventing Complainant from using 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant argues that it has rights in the WHITE TIGER mark but does not specifically argue it has common law rights. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration of a domain name if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). When a complainant does not specifically argue common law rights, prior Panels have found such rights based on evidence provided by the complainant if that evidence infers a secondary meaning has been established. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA 1763598 (Forum Jan. 22, 2018) (“While Complainant does not specifically argue that it has common law trademark rights in FIND YOUR BALANCE, the Panel finds Complainant’s evidence infers that the Complainant has acquired secondary meaning within the FIND YOUR BALANCE mark.”). Here, Complainant provides photographs of merchandise featuring the WHITE TIGER mark and the <whitetigerworld.com> domain name, as well as yellow page listings and community newsletters featuring its mark and claims to have used the mark for over 30 years. The Panel therefore finds that Complainant does hold common law rights in the WHITE TIGER mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WHITE TIGER mark. Complainant argues Respondent’s <whitetigerworld.com> domain name is confusingly similar to Complainant’s WHITE TIGER mark as Respondent includes the entirety of the trademark in the domain name and merely adds the generic word “world”. The disputed domain name also includes the “.com” generic top-level domain (“gTLD”). Adding a generic or descriptive word to a complainant’s mark and a gTLD may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Inclusion of a generic or descriptive word may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds Respondent’s <whitetigerworld.com> domain name is confusingly similar to Complainant’s WHITE TIGER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s WHITE TIGER trademark and to use it in its domain name, adding the generic word “world” which does not negate the identicality between the domain name and the trademark;
(b) Respondent registered the <whitetigerworld.com> domain name on January 3, 2005;
(c) It is clear from the evidence that Complainant was the prior owner of the domain name but that when the owner of Complainant was ill he overlooked re-registering the domain name when it fell due for re-registration and Respondent registered the domain name;
(d) Respondent has sought to disrupt Complainant’s business by preventing Complainant from using the disputed domain name;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues Respondent has no rights or legitimate interest in the <whitetigerworld.com> domain name, as Respondent purchased the domain name after Complainant accidently let the registration of the disputed domain name lapse. A disputed domain name that is registered by a respondent after a complainant inadvertently allowed the domain name’s registration to lapse may show a respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… 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.”). Here, Complainant alleges that Respondent was a former student at the Kung Fu school and took advantage of an illness that afflicted the owner of Complainant, registering the disputed domain name when Complainant accidently allowed the registration to lapse while tending to other matters. Therefore, the Panel finds Respondent has no rights or legitimate interest in the <whitetigerworld.com> domain name under Policy ¶ 4(a)(ii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant argues Respondent sought to disrupt Complainant’s business by preventing Complainant from using the disputed domain name, which is indicative of Respondent’s bad faith. Registering a disputed domain name merely to hold and block a complainant from reflecting its mark in a domain name format may be evidence of bad faith under 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, Complainant contends that Respondent was a former student of Complainant’s who registered the disputed domain name when the registration lapsed while the owner of Complainant was ill. Complainant further notes that the Respondent has not used the domain name for any purpose. Therefore, the Panel finds Respondent registered and uses the <whitetigerworld.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whitetigerworld.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 23, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page