Tailwind Labs Inc. v. Arslan Khan / Alpha Squad
Claim Number: FA2308002057970
Complainant is Tailwind Labs Inc. (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is Arslan Khan / Alpha Squad (“Respondent”), represented by Ben T. Lila of Mandour & Associates, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tailwinduikit.com>, registered with Amazon Registrar, Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on August 17, 2023; Forum received payment on August 17, 2023.
On August 18, 2023, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <tailwinduikit.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. 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 August 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@tailwinduikit.com. Also on August 22, 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 September 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 asserts trademark rights in TAILWIND. Complainant submits that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
In detail, Complainant is a software developer whose principal product is an open-source website building (CSS) framework known as TAILWIND. Complainant asserts trademark rights in that name through use.
In late February, 2020, Complainant made a social media announcement of the release of a commercial product built on the Tailwind CSS platform, named "Tailwind UI". The term UI (user interface) is well understood in the software industry.
Complainant asserts that sales were immediate, substantial, and ever-increasing and that, concurrent with the release of "Tailwind UI", Complainant launched a site at www.tailwindui.com dedicated to this user-interface development product.
Complainant further asserts that considerations of legitimate rights and bad faith merge in that Respondent has not used the name TAILWIND nominatively and fairly to identify Complainant’s open-source framework, but has intentionally adopted the domain name to resolve to a website in order to pass itself off as Complainant and purport to sell a competitive UI product by reference to Complainant’s trademark.
Finally, Complainant asserts that in response to its pre-Complaint letter of demand, Respondent undertook that: "AlphaSquad intends to permanently cases all use of 'tailwind' by June 30, 2023." That undertaking was broken and, at the time of the Complaint, Respondent continued in its earlier behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complaint is a software developer doing business by reference to the name TAILWIND;
2. the disputed domain name was registered on April 13, 2020, by Respondent using a privacy service to shield its identity; and
3. the disputed domain name resolves to a website that displays Complainant’s trademark and creates the impression of being a site operated by Complainant.
DISCUSSION
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.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant apprehends that the Panel may not recognize either a trade mark or trademark rights and, indeed, the two issues before the Panel are (i) whether a trademark exists, and (ii) if so, whether (common law) rights exist in that mark.
In broad terms, a trademark as a sign which distinguishes the goods or services of one trader from those or another, and so an issue arises as to whether free-to-use, open-source software can be used in a way which uniquely identifies its developer. Complainant submits that:
[t]he mere fact that a software project may be open source, or provided under a free license, does not somehow negate the Complainant's interest in the mark and in enforcing the mark to avoid confusion with the authorized source of Complainant's goods or services. Complainant recognizes that other software products are offered on a free open-source license basis and certain types of nominative use of the product names exist, but it argues that use typically includes trademark licensing and usage terms specifically designed to permit nominative use by the community, while prohibiting passing-off or confusing indications of authorization.
The Panel agrees, but in any event, the circumstances here are that “Tailwind UI” is the name given to a (commercial) component kit built with the TAILWIND framework. The Panel accepts that the term UI is well understood in the relevant industry as meaning “user interface” and is thus essentially generic or descriptive and so finds that Complainant has used TAILWIND (and, so far as it matters, “Tailwind UI”) as a trademark.
The next question is whether Complainant has trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights but in this instance, Complainant concedes that its applications for registration remain pending. Nevertheless, a complainant may equally rely on unregistered or so-called common law trademark rights, established through use and public recognition.
Here, Complainant makes no specific assertion of common law rights, claiming only that TAILWIND is well recognized. In support of that claim it refers to a Wikipedia’s list of six notable CSS frameworks which includes Complainant’s TAILWIND. Complainant further references a small business blog from January 2021 entitled, "Monetizing Open-Source / How Tailwind CSS has grown into a $2m+ business". Finally, Complainant makes the unsupported claim it is “reliably doing mid-seven figures per year”.
This level of evidence falls well short of the material typically required to make a showing of common law trademark rights and in other circumstances would be inadequate. However, the Panel takes note of the very impressive first day (February 26, 2020) sales of “Tailwind UI” and bearing in mind the fast-moving and highly specialized field of business finds that Complainant has established trademark rights, at least by the time of the Complaint, if not at the time of creation of the disputed domain name.
For the purposes of comparison of the disputed domain name with the trademark, the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007). The disputed domain name takes the trademark, merely adding the generic term, “ui”, and the word, "kit", referring to a CSS library. The additions do not distinguish the domain name from the trademark for the purposes of the Policy (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information shielded the name of the actual owner of the domain name but in consequence of these proceedings the Registrar has identified “Arslan Khan” as the domain name registrant and “Alpha Squad” as the registrant organization. The Panel finds no evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights. Further, Complainant states that use of the disputed domain name has been in contravention of Complainant’s Branding Guidelines which form part of the terms on which Respondent or others can use the software. On the evidence, this appears to be correct.
Furthermore, the evidence is that the resolving website attempts to pass itself off as being that of a website maintained by Complainant. It uses the trademark in a way which appears to assert proprietorship and includes a footer, "2021 Tailwind UI Kit. All Rights Reserved", intended to create the impression to an Internet user that it has reached Complainant’s site. The website then purports to sell a competitive UI product.
Clearly, such use does not give rise to rights or a legitimate interest. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name.
The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel has already found confusing similarity between the domain name and the trademark. That confusion attracts Internet users to an online location intended for commercial gain. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) : “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tailwinduikit.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 14, 2023
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