Phusion Projects, LLC v. Milen Radumilo
Claim Number: FA2301002028893
Complainant is Phusion Projects, LLC (“Complainant”), represented by Robert Leighton of Goldberg Kohn Ltd., Illinois, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fourlokobeer.com>, registered with SNAPNAMES 10, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 24, 2023; Forum received payment on January 24, 2023.
On January 26, 2023, SNAPNAMES 10, LLC confirmed by e-mail to Forum that the <fourlokobeer.com> domain name is registered with SNAPNAMES 10, LLC and that Respondent is the current registrant of the name. SNAPNAMES 10, LLC has verified that Respondent is bound by the SNAPNAMES 10, 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 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@fourlokobeer.com. Also on January 30, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the FOUR LOKO trademark established by its ownership of the trademark registrations described below and its use of the mark since 2008 to distinguish the alcoholic beverages that it produces which are sold internationally, and are promoted on Complainant’s website at <www.fourloko.com>.
Complainant submits that its FOUR LOKO mark has become famous due to the product's popularity and extensive media coverage of the brand.
Complainant asserts that it has over 100 employees in multiple countries and over $1 billion in worldwide revenue under the FOUR LOKO brand, adding that it has spent in excess of $150 million to promote its FOUR LOKO brand and beverages worldwide.
Complainant submits that by virtue of these efforts, the FOUR LOKO mark and fourloko.com have become well recognized by consumers as designating Complainant as the source of ds so marked.
Complainant alleges that the disputed domain name is confusingly similar to the FOUR LOKO mark in which Complainant has the above-described rights, arguing that the disputed domain name incorporates the FOUR LOKO in its entirety which is sufficient to establish confusing similarity for the purposes of the Policy.
Complainant contends that the disputed domain name begins with, and incorporates the entirety of the FOUR LOKO mark and adds only the descriptive word “beer,” which describes an alcoholic beverage. Complainant notes that its beverages are alcoholic drinks.
Moreover, Complainant submits that the addition of the generic Top-Level Domain (“gTLD ") extension <.com> does not have any source-indicating significance and does not distinguish the disputed domain name from Complainant's trademark. Citing Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case D2000-0165, (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, submitting that upon information and belief Respondent is not commonly known by “Four Loko” or “Four Loko Beer” or confusingly similar names, because Complainant’s FOUR LOKO mark is so well known. See Victoria’s Secret v. Asdak, FA 96542 (Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).
FOUR LOKO is an arbitrary term when used in connection with Complainant’s products and has no meaning other than as a means to identify Complainant.
Complainant submits that this Panel is entitled to rely on WHOIS information and common sense to decide whether Respondent is commonly known by the domain name, adding that where privacy services are used to register the domain name, the Panel has relied on this and other information to determine that the respondent is not commonly known by the domain name at issue. Citing Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); and Google Inc. v. Domain Name Privacy Protection, FA1705001732901 (Forum June 29, 2017) ("Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially when a privacy service is shown as the registrant.").
Complainant asserts that Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use the FOUR LOKO mark for any purpose.
Referring to screen captures of the websites to which the disputed domain has resolved since its registration Complainant submits that they show that it has resolved to an inactive webpage on which it has been offered for sale and on another occasion to a webpage attempting to distribute malware.
Specifically, the exhibited screen captures show that on January 23, 2023, the disputed domain name resolved to no active webpage, but rather a landing page with a link to “buy this domain.” On January 24, 2023, the disputed domain name resolved to a webpage attempting to trick users and/or install malware as shown in the screen captures.
Complainant submits that neither an offering to sell a disputed domain nor using it to facilitate the transfer of malware or engage in other illegal activity can constitute a legitimate interest in the disputed domain for the purposes of the Policy. See, e.g., Dow Jones & Company, Inc. v. Weng, Forum Case FA2211002018619 (Forum Jan. 16, 2023) (“As set forth in section 2.13.1 of WIPO Overview 3.0: ‘Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.’)
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that there is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name.
Complainant submits that its distinctive FOUR LOKO trademark had become famous well before Respondent registered the disputed domain name incorporating the mark on December 16, 2022. Therefore, Respondent had actual or constructive knowledge of Complainant's rights in its FOUR LOKO mark prior to the registration of the disputed domain name and can only have registered the disputed domain name in order to profit from the goodwill of Complainant's trademark. See America Online, Inc. v. TouchTone Pictures, LLC, FA0203000105776 (April 11, 2002) (inferring that Respondent had knowledge of Complainant's AOL mark given the prominence of the mark and thus Respondent registered the domain name in bad faith).
It is further contended that upon information and belief, Respondent is using the disputed domain name with the intention of profiting from and exploiting Complainant's FOUR LOKO mark. The exhibited screen captures of the websites to which the disputed domain name has resolved illustrate that Respondent has made the disputed domain name available for sale and is using the disputed domain name to facilitate the distribution of malware or other illegal activities.
Complainant argues that such use constitutes bad faith for the purposes of the Policy. Citing Wal-Mart Stores, Inc. v. Stork, WIPO Case D2000-0628, (holding the offering of a disputed domain name for sale is evidence of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of beverages on which it uses the FOUR LOKO and is the owner of
· United States registered trademark FOUR LOKO, registration number 4428131, registered on the Principal Register on November 5, 2013 for goods in international classes 25 and 33;
· United States registered trademark FOUR LOKO (stylized), registration number 4,038,908, registered on the Principal Register on October 11, 2011 for goods in international class 33;
· United States registered trademark FOUR LOKO (stylized) registration number 4,199,179, registered on the Principal Register on August 28, 2012, for goods in international class 25;
· United States registered trademark FOUR LOKO (stylized) registration number 3,988,581, registered on the Principal Register on July 5, 2011 for goods in international class 33;
Complainant also claims ownership of a number of European Union Trade Marks and one Romanian registered trademark but these claims are unsubstantiated as Complainant has not provided any evidence of those registrations.
Complainant has an established Internet presence and maintains a website at <www.fourloko.com>.
The disputed domain name <fourlokobeer.com> was registered on December 16, 2022 and has resolved to websites on which it is offered for sale and another which is being used in an endeavor to infect Internet users’ devices with malware.
There is no information available about Respondent except for that which is provided in the Complaint, as amended, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
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 provided convincing, uncontested evidence that it has rights in the FOUR LOKO mark, established by the ownership of the portfolio of trademark registrations described above.
Complainant has made an uncontested assertion that it has an extensive international reputation with over $1 billion in worldwide revenue and has spent more than $150 million to promote its FOUR LOKO brand and beverages worldwide.
Additionally Complainant has adduced in evidence a screen capture of the website that it maintains at <www.fourloko.com> to promote its products.
The disputed domain name <fourlokobeer.com> consists of Complainant’s FOUR LOKO mark in its entirety in combination with the word “beer” and the gTLD <.com>.
Complainant’s FOUR LOKO mark is the initial, dominant and only distinctive element in the disputed domain name. The descriptive word “beer” adds no distinguishing character to the disputed domain name and does not prevent a finding of confusing similarity.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the FOUR LOKO mark in which Complainant has rights and 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 legitimate interests in the disputed domain name arguing that
· upon information and belief Respondent is not commonly known by “Four Loko” or “Four Loko Beer”;
· FOUR LOKO is an arbitrary term when used in connection with Complainant’s products and has no meaning other than as a means to identify Complainant;
· Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use the FOUR LOKO mark for any purpose;
· it can be inferred that Respondent is not commonly known by the fourlokobeer name, or confusingly similar names, because Complainant’s FOUR LOKO mark is so well known;
· the screen captures of the websites to which the disputed domain has resolved since registration which show that it has resolved to an inactive webpage and on another occasion to a webpage attempting to distribute malware;
· specifically, the exhibited screen captures show that on January 23, 2023, the disputed domain name resolved to an inactive landing page with a link to “buy this domain”; and on January 24, 2023, the disputed domain name resolved to a webpage attempting to trick users and/or install malware;
· neither of such uses of the disputed domain name as the address of a webpage on which it is offered for sale nor using it to facilitate the transfer of malware or engage in other illegal activity can constitute a legitimate interest in the disputed domain for the purposes of the Policy;
· this Panel is entitled to rely on WHOIS information and common sense to decide whether Respondent is commonly known by the domain name;
· where privacy services are used to register a domain name in issue as in the present case, a panel established under the Policy may use that fact and other information to determine that the respondent is not commonly known by the domain name at issue.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the FOUR LOKO mark which predate the registration and first use of the disputed domain name on December 16, 2022.
FOUR LOKO is the dominant, initial and only distinctive element in the disputed domain name and the addition of the element “beer” is clearly a reference to alcoholic beverages which is Complainant’s trade.
In the absence of any Response, this Panel is satisfied that there is no plausible reason why the disputed domain name was chosen and registered other than to infer a reference to Complainant’s FOUR LOKO mark.
The Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind to take predatory advantage of the goodwill and reputation that Complainant has established in the FOUR LOKO mark
The uncontested evidence adduced by Complainant shows that the disputed domain name has been offered for sale on an inactive website.
Sinisterly, a screen captures adduced in evidence also shows that the disputed domain name has resolved on another occasion to a website that on the balance of probabilities is purporting to infect the devices of Internet users with malware.
The screen capture shows that when accessing Respondent’s website, Windows Defender generated messages on Complainant’s device stating:” Do not restart your computer. Your computer is disabled. Please call us. Access is blocked due to security reasons on this computer”, and “[y]our computer has alerted us that it has been infected with a trojan Spyware…”
Such use of a domain name as the address of a website for the purposes of infecting the computers of unsuspecting Internet users with spyware, is clearly a use of the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fourlokobeer.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Panelist
Dated: March 1, 2023
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