Empire Flippers, LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2205001996793
Complainant is Empire Flippers, LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, PLLC, US. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), PA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <empirefllippers.com>, registered with Media Elite Holdings Limited.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2022; the Forum received payment on May 18, 2022.
On May 18, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <empirefllippers.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2022 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@empirefllippers.com. Also on May 23, 2022, 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.
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, Empire Flippers, LLC, operates a brokerage assisting in the sale of online businesses. Complainant has rights in the EMPIRE FLIPPERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,892,061, registered Jan. 26, 2016). Respondent’s <empirefllippers.com> domain name is identical or confusingly similar to Complainant’s EMPIRE FLIPPERS mark, incorporating the mark in its entirety and merely adding a second letter “L” to the term “FLIPPERS” within the mark, likely to acquire traffic through accidental misspelling, before attaching the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <empirefllippers.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the EMPIRE FLIPPERS mark. Moreover, Respondent does not use the disputed domain name for any bona fide offer of goods or services nor for any legitimate noncommercial or fair use. Instead, Respondent resolves the disputed domain name to a parked website offering hyperlinks to Complainant’s competitors. Respondent also uses the disputed domain name in a malware distribution scheme.
Respondent registered and uses the <empirefllippers.com> domain name in bad faith. First, Respondent registered the disputed domain name to trade off the goodwill of Complainant and attempt to associate itself with Complainant’s legitimate business. Respondent has used the disputed domain name to obtain click-through revenue from monetized hyperlinks which direct visitors to Complainant’s competitors. Moreover, Respondent uses the disputed domain name to distribute malware. Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EMPIRE FLIPPERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <empirefllippers.com> 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 asserts rights in the EMPIRE FLIPPERS mark through its registration with the USPTO (e.g., Reg. No. 4,892,061, registered Jan. 26, 2016). Registration of a mark with a nation’s trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”). The Panel finds that Complainant has rights in the EMPIRE FLIPPERS mark within the meaning of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <empirefllippers.com> domain name is identical or confusingly similar to Complainant’s EMPIRE FLIPPERS mark as it incorporates Complainant’s entire mark and merely adds a second “L” to the term “FLIPPERS” within the mark and appends the “.com” gTLD. The mere addition of a letter and a gTLD generally does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . “); see also ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . “). The Panel finds that the dispute domain name is confusingly similar to Complainant’s EMPIRE FLIPPERS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <empirefllippers.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the EMPIRE FLIPPERS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a Respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use another’s mark may further demonstrate that a Respondent lacks rights and legitimate interests in a domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information of record indicates that Respondent utilized a privacy service, as it identifies “Domain Administrator / Fundacion Privacy Services LTD” as the registrant of the disputed domain name. Nothing within the record indicates that Complainant authorized Respondent’s use of the EMPIRE FLIPPERS mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <empirefllippers.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use as Respondent resolves the disputed domain name to a parked webpage displaying monetized hyperlinks to Complainant’s competitors. Such use generally does not constitute a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”); see also The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Complainant provides screenshots of the resolving website for the disputed domain name as evidence that Respondent attempts to generate click-through revenue through hosting a parked website with links related to Complainant’s business. The Panel finds that Respondent fails to use the disputed domain name for any bona fide offer of goods or services nor for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent uses the <empirefllippers.com> domain name in furtherance of a malware distribution scheme. Use of a domain name to distribute malware does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides evidence that the disputed domain distributes malware to visitors. The Panel finds that Respondent lacks rights and legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant contends that Respondent registered and uses the <empirefllippers.com> domain name in bad faith because Respondent attempts to associate itself with Complainant to trade off Complainant’s goodwill and obtain click-through revenue from monetized hyperlinks. Using a domain name to display pay-per-click hyperlinks to Complainant’s competitors may demonstrate bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s use to generate click-through revenue. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent uses the <empirefllippers.com> domain name to distribute malware to visitors’ devices. Past Panels have found that using a domain name to attempt to distribute malware may demonstrate bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the [disputed] domain name in bad faith under Policy ¶ 4(a)(iii)”); see also eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Complainant provides evidence that the disputed domain name appears to distribute malware onto visitors devices upon entering the resolving website. This is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the EMPIRE FLIPPERS mark. Notably, the Panel may disregard any arguments based on constructive notice, as UDRP precedent has found it insufficient to support a finding of bad faith. See Tiger Payment Solutions LLC v. wes madan / united oil heat, inc, FA 1602001660350 (Forum Mar. 23, 2016) (Adopting the position that “there is no place for constructive notice of trademark rights under the Policy.”). However, the Panel may choose to address arguments based on actual knowledge, and may make reasonable presumptions based on the notoriety of Complainant’s mark and the Respondent’s use of the disputed domain name. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Complainant is a large, well-known entity which helps sell online businesses, and Respondent resolves the disputed domain name to a parked website offering hyperlinks related to Complainant’s business. The Panel finds, from the fame of Complainant’s mark, and the use made of the domain name, that Respondent had actual knowledge of Complainant’s mark, and registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <empirefllippers.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page