Goorin Bros., Inc. v. Nguyễn Văn Lư
Claim Number: FA2303002036725
Complainant is Goorin Bros., Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Nguyễn Văn Lư (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goorinbrothers.com>, registered with April Sea Information Technology Company Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 21, 2023; Forum received payment on March 21, 2023. The Complaint was submitted in English.
On March 23, 2023, April Sea Information Technology Company Limited confirmed by e-mail to Forum that the <goorinbrothers.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company 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 March 24, 2023, Forum served the Complaint and all Annexes, including a Vietnamese and English Written Notice of the Complaint, setting a deadline of April 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@goorinbrothers.com. Also on March 24, 2023, the Vietnamese and English 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 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to object to going forward in English, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
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”).
Respondent’s <goorinbrothers.com> domain name is identical or confusingly similar to Complainant’s GOORIN BROS. mark as it incorporates the mark while including the entire word “brothers” instead of the abbreviation “bros” like in Complainant’s mark; additionally, the domain name incorporates the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <goorinbrothers.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its GOORIN BROS. mark in the at-issue domain name. Respondent does not use the 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.
Respondent registered and uses the <goorinbrothers.com> domain name in bad faith. Respondent engaged in a pattern of bad faith registration and use. Additionally, Respondent diverts users to its parked page with pay-per-click links. Furthermore, Respondent registered the domain name with constructive and/or actual knowledge of Complainant’s rights in the GOORIN BROS. mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOORIN BROS. trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the GOORIN BROS. trademark.
Respondent uses the at-issue domain name to address a pay-per-click website.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration or any of its other trademark registrations worldwide for its GOORIN BROS. trademark is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <goorinbrothers.com> domain name contains Complainant’s entire GOORIN BROS. trademark, less its space, with the mark’s BROS. term in its long form as “brothers” and with all followed by the “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <goorinbrothers.com> domain name from Complainant’s GOORIN BROS. mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <goorinbrothers.com> domain name is confusingly similar to Complainant’s GOORIN BROS. trademark. 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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Nguyễn Văn Lư” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known as <goorinbrothers.com>. The Panel therefore concludes that Respondent is not commonly known by the <goorinbrothers.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <goorinbrothers.com> domain name to address a parked webpage displaying pay-per-click links. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent has a history of domain name abuse including UDRP proceedings that resulted in the subject domain names being transferred. See, e.g., Equifax Inc. v. Nguyễn Văn Lư, D2022-2750 (WIPO Sept. 14, 2022); American Airlines, Inc. v. Nguyễn Văn Lư, D2021-4102 (WIPO Feb. 2, 2022); National Collegiate Athletic Association v. Nguyễn Văn Lư, D2021-4050 (WIPO Feb. 1, 2022). Respondent thus exhibits a pattern of bad faith domain name registration that is indicative of Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next and as mention above regarding rights and legitimate interests, Respondent uses the at-issue domain name to direct internet users to a parked page displaying pay-per-click links. Such use of the domain name is disruptive to Complainant’s business and capitalizes on the confusion that Respondent created between the domain name and Complainant’s trademark. Respondent’s use of <goorinbrothers.com> in this manner shows Respondent’s bad faith registration and use of <goorinbrothers.com> pursuant to Policy¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA 1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the GOORIN BROS. mark when it registered <goorinbrothers.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s GOORIN BROS. trademark. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in GOORIN BROS. shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goorinbrothers.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 20, 2023
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