Goorin Bros., Inc. v. Hulmiho Ukolen
Claim Number: FA2303002036723
Complainant is Goorin Bros., Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington D.C., USA. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goorinbros.com>, registered with Gransy, s.r.o..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on March 21, 2023; Forum received payment on March 21, 2023.
On March 24, 2023, Gransy, s.r.o. confirmed by e-mail to Forum that the <goorinbros.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 March 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@goorinbros.com. Also on March 27, 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 April 25, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Goorin Bros, Inc., offers artisan hat-making including hats, bags, and apparel. Complainant has rights in the GOORIN BROS. mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,825,023, registered on July 27, 2010). Respondent’s <goorinbros.com> domain name is identical or confusingly similar to Complainant’s GOORIN BROS. mark as it incorporates the mark in its entirety, only adding the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights and legitimate interests in the <goorinbros.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its GOORIN BROS. mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts a parked page with pay-per-click links and offers the domain for sale.
Respondent registered and uses the <goorinbros.com> domain name in bad faith. Respondent engaged in a pattern of bad faith registration and use. Also, Respondent uses the disputed domain to offer it for sale. Additionally, Respondent diverts users to its parked page with pay-per-click links. Respondent’s bad faith registration may also be demonstrated by its use of a privacy service in the disputed domain name’s WHOIS information. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GOORIN BROS 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 <goorinbros.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 GOORIN BROS. mark through its registration with the USPTO (e.g. Reg. No. 3,825,023, registered on July 27, 2010). Registration of a mark with the USPTO is generally sufficient in demonstrating rights in the mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant has registered its mark with the USPTO. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant asserts Respondent’s <goorinbros.com> domain name is identical or confusingly similar to Complainant’s GOORIN BROS. Under Policy ¶ 4(a)(i), incorporating a protected mark in its entirety while adding the “.com” gTLD is insufficient in differentiating from the mark. See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’s RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The disputed domain name incorporates the mark in its entriety and and appends the “.com” gTLD. The Panel finds that Respondent’s mark is identical or confusingly similar to Complainant’s mark under 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 contends Respondent is not commonly known by the <goorinbros.com> domain name, nor has Complainant authorized or licensed Respondent to use its GOORIN BROS. mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “Hulmiho Ukolen.” Additionally, there is no evidence to suggest that Respondent was ever authorized to use Complainant’s mark in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts Respondent is not using the <goorinbros.com> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host a parked webpage with pay-per-click links is not a bona fide offering of goods or services, nor any noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving webpage, which hosts parked links relating to Complainant’s business. The Panel finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant also asserts Respondent is not using the <goorinbros.com> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use as Respondent uses the disputed domain name to offer it for sale. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to offer it for sale. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant attaches evidence that Respondent is offering the Domain Name for sale via the Afternic domain name marketplace at an inflated list price of USD $18,700. The Panel finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts Respondent registered and uses the <goorinbros.com> domain name in bad faith by engaging in a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), a respondent’s involvement in previous UDRP disputes may establish a finding of a pattern of bad faith registration and use. Complainant asserts that Respondent has a long history of adverse UDRP proceedings. See Sturm, Ruger & Co., Inc. v. Hulmiho Ukolen / Poste restante, FA 1959501 (Forum Sept. 24, 2021) (transferring sturmruger.com to complainant); see also Airbnb, Inc. v. Hulmiho Ukolen / Poste restante, FA 1952579 (Forum July 23, 2021) (transferring airnb.com to complainant); see also Caterpillar Inc. v. Hulmiho Ukolen / Poste restante, FA 1835991 (Forum Apr. 30, 2019) (transferring catterpillar.com to complainant); see also Fragrancenet.com, Inc. v. Hulmiho Ukolen, FA 1497908 (Forum June 24, 2013) (transferring fragrncenet.com to complainant). Complainant asserts that Respondent has lost in over ten previous UDRP proceedings. See e.g. Equifax Inc. v. Nguyễn Văn Lư, Case No. D2022-2750 (WIPO Sept. 14, 2022). This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant notes Respondent registered and uses the <goorinbros.com> domain name in bad faith by diverting users to its parked page with pay-per-click links. Under Policy ¶ 4(b)(iv), using a disputed domain name to host pay-per-click links is evidence of bad faith registration and use. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Complainant provides screenshots of the resolving parked webpage that displays pay-per-click advertisements. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts Respondent registered the <goorinbros.com> domain name with actual knowledge of Complainant’s rights in the GOORIN BROS. mark. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also 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 notes that its famous GOORIN BROS. mark is incorporated into the disputed domain name and the resolving webpage hosts links related to Complainant’s business. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s use of a privacy service in the WHOIS information for <goorinbros.com> domain name evinces a finding of bad faith registration and use. Past panels have found bad faith registration and use under Policy ¶ 4(a)(iii) where respondent provided false or misleading WHOIS information. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Complainant provides WHOIS information, showing Respondent’s use of a privacy service. This is evidence of bad faith.
The Panel finds that Respondent registered and uses the disputed domain name in bad faith under 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 <goorinbros.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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