Google LLC v. Alex Xavier / Alexander Xavier / Sustineri Foresight Ltd
Claim Number: FA2301002028296
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, US. Respondent is Alex Xavier / Alexander Xavier / Sustineri Foresight Ltd (“Respondent”), UK.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fitbitbands.com> and <fitbitstraps.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 19, 2023. Forum received payment on January 19, 2023.
On January 20, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <fitbitbands.com> and <fitbitstraps.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2023 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@fitbitbands.com, postmaster@fitbitstraps.com. Also on January 24, 2023, 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.
On January 25, 2023, the parties jointly requested a stay of the proceeding, which Forum ordered that day. The stay was lifted by Forum on February 16, 2023, upon a request from Complainant that day.
Having received no formal response from Respondent by the extended deadline of March 6, 2023, Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Whether There Are Multiple Respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the <fitbitbands.com> and <fitbitstraps.com> domain names are effectively controlled by the same person. The Registrar has confirmed that the <fitbitbands.com> domain name is registered in the name Alexander Xavier, whose organization is Sustineri Foresight Ltd, and that that the <fitbitstraps.com> domain name is registered in the name Alex Xavier. The phone numbers and email addresses of Alex Xavier and Alexander Xavier are the same.
In the absence of any evidence to the contrary, the above circumstances satisfy the Panel that the domain names are commonly owned and controlled by a single person.
A. Complainant
Complainant, Google LLC, offers a variety of technological services. Complainant has rights in the FITBIT mark based upon registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <fitbitbands.com> and <fitbitstraps.com> domain names are confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <fitbitbands.com> and <fitbitstraps.com> domain names. Respondent is not licensed or authorized to use Complainant’s FITBIT mark and is not commonly known by the domain names. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to create initial interest confusion for Internet users seeking information about Complainant.
Respondent registered the <fitbitbands.com> and <fitbitstraps.com> domain names in bad faith with actual knowledge of Complainant’s rights in the FITBIT mark and uses them in bad faith to pass himself off as Complainant.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
C. Additional Submissions
On February 8, 2023, Respondent informally notified Forum that he did not plan to submit any evidence to a panel.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the FITBIT mark based upon numerous registrations, including with the USPTO (e.g., Reg. No. 3,732,334, registered December 29, 2009). The Panel finds Respondent’s <fitbitbands.com> and <fitbitstraps.com> domain names to be confusingly similar to Complainant’s mark because they each contain the FITBIT mark in its entirety, merely adding the terms “bands” and “straps” respectively, which do nothing to distinguish the domain names from the mark, and the inconsequential generic top-level domain name (“gTLD”) “.com” which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <fitbitbands.com> and <fitbitstraps.com> domain names were registered on June 24, 2021, and November 8, 2020, respectively, many years after Complainant registered its well-known FITBIT mark. They resolve to nearly identical websites that prominently display the FITBIT mark and offer accessories to Complainant’s FITBIT products at a 30% discount.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <fitbitbands.com> and <fitbitstraps.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known FITBIT mark when Respondent registered the <fitbitbands.com> and <fitbitstraps.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <fitbitbands.com> and <fitbitstraps.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 15, 2023.
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