ZenByCat v. Galin Popov
Claim Number: FA2308002058845
Complainant is ZenByCat (“Complainant”), represented by Andrew Gerber of Kushnirsky Gerber PLLC, New York, USA. Respondent is Galin Popov (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fipwarriors.us>, registered with Google LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on August 24, 2023; Forum received payment on August 24, 2023.
On August 24, 2023, Google LLC confirmed by e-mail to Forum that the <fipwarriors.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@fipwarriors.us. Also on August 25, 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 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 is a non-profit organization based in California that provides guidance to cat owners looking for treatment options and support in connection with a disease called feline infectious peritonitis, commonly abbreviated as “FIP”. Complainant’s website, at the <fipwarriors.com> domain name, along with its Facebook Group page, also called FIP WARRIORS, are Complainant’s main public-facing portals. Registrations of the FIP WARRIORS trademark were obtained at the United States Patent and Trademark Office (e.g., Reg. No. 6438041 registered on August 3, 2021). Respondent’s <fipwarriors.us> domain name, registered on February 15, 2023, is identical or confusingly similar to the FIP WARRIORS mark as it copies the mark in its entirety and adds only the “.us” ccTLD.
Respondent has no rights or legitimate interests in the disputed domain name as it is used to promote identical services and intentionally diverts customers seeking Complainant's site and Facebook group.
The disputed domain name was registered and is used in bad faith as it competes with Complainant and seeks to intentionally siphon away visitors who are searching for Complainant’s site and its competing Facebook group by using a confusingly similar domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has proven that it has rights in the FIP WARRIORS trademark and the <fipwarriors.us> domain name is confusingly similar to the mark;
- Respondent lacks rights or legitimate interests in the disputed domain name as there is no evidence indicating that it owns any relevant trademark rights, is commonly known by the domain name, or is making a bona fide offering of goods or services, and where the domain name is used to misleadingly divert customers; and
- The disputed domain name was registered and is used in bad faith where it is used to compete with Complainant and disrupt its business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 FIP WARRIORS trademark based upon registration thereof with the USPTO. Under Policy ¶ 4(a)(i), registration with the USPTO is sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO adequately proves its rights under Policy ¶ 4(a)(i)). As Complainant has submitted screenshots of the USPTO registration certificates for its asserted trademark, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <fipwarrior.us> domain name is identical or confusingly similar to Complainant’s FIP WARRIORS mark as it incorporates the mark in its entirety and merely adds the “.us” generic top-level-domain name ("gTLD"). The addition of a TLD typically fails to sufficiently distinguish a disputed domain name from an asserted trademark per Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”) As the second level of the <fipwarrior.us> domain name consists exclusively of Complainant’s mark and the full name adds only the “.us” ccTLD, the Panel finds that the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant makes no mention of Policy ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is “the owner or beneficiary of a trade or service mark that is identical to the domain name.” Nevertheless, the Panel will consider this issue for the sake of completeness. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel notes that no evidence is of record relevant to Policy ¶ 4(c)(i) and so it cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.
Complainant also makes no mention of Policy ¶ 4(c)(iii) but the Panel will consider this issue as well. This clause of the Policy raises the question of whether Respondent has rights or legitimate interests in the <fipwarriors.us> domain name based on it being commonly known by the disputed domain name. Panels often consider WHOIS information in exploring the question of whether a respondent is commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS record for the <fipwarriors.us> domain name, as verified to the Forum by the concerned Registrar, identifies Respondent only as “Galin Popov.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). Here, Respondent has not filed a Response or made any other submission in this case and so it does not provide any evidence to suggest that it has Complainant’s authorization to use the FIP WARRIORS mark. Complainant’s assertion that “Respondent is intentionally stealing Complainant’s goodwill” indicates the contrary. Thus, the Panel finds no ground upon which to conclude that Respondent is commonly known by the <fipwarriors.us> domain name under Policy ¶ 4(c)(iii).
The bulk of Complainant’s argument appears to be that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Rather, it asserts that Respondent uses the <fipwarriors.us> domain name to pass itself off as Complainant by offering identical services and deceiving visitors to its site. Passing off is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to [UDRP] Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to [UDRP] Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Complainant has provided a screenshot of Respondent’s website which prominently displays the FIP WARRIORS mark at the top followed by a description of the FIP condition, a phone number with a Phoenix, Arizona area code, and an email address which uses the <fipwarriors.us> domain name. It further invites users to visit a Facebook group called “FIP CURE”. While the page appears to be a blog site, the Panel notes that the disputed domain name is nearly identical to Complainant’s own <fipwarriors.com> address and the disputed domain name, when combined with its website content, appears intended to “misleadingly divert customers” away from Complainant. Complainant asserts that “[t]he FIP treatment community is small and contentious” and that “Respondent’s competing Facebook Group originally also copied Complainant’s FIP WARRIORS name and Respondent was forced to change its group name following our complaint to Facebook.” Respondent has not filed a Response nor made any other submission in this case and so it does not contest Complainant’s assertions or offer any alternate explanation for its actions which appear, to this Panel, to present a clear case of trademark infringement. As Complainant has made a prima facie case that has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and that it does not make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iv).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its FIP WARRIORS mark at the time it registered the <fipwarriors.us> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). Complainant submits a screenshot from its own <fipwarriors.com> website. It also claims that it “has built up valuable goodwill and reputation” and that it “is the most well-known FIP support group in the United States, if not the world”. Complainant only provides screenshots of its own website and of its trademark registrations which, by themselves, don’t speak directly to the reputation of the asserted mark. However, the Panel did click on the link at Complainant’s site and found that its “FIP Warriors 5.0” Facebook group has over fifty thousand members. Complainant further notes that “[t]he FIP treatment community is small and contentious” and points out that Respondent “could have chosen from dozens of other words and domain combinations other than ‘warrior’: FIP FIGHTER, FIP SOLDIER, FIP OPPONENT, FIP BATTLER, FIP CHAMPION, FIP HERO, FIP TROOPER, FIP CONQUEROR, FIP KNIGHT, FIP SAVIOR, FIP WINNER, etc. It did not. It chose to copy Complainant’s well-known mark and domain.” It further notes that “visitors seeking Complainant are already actually confused by Respondent’s copycat domain….” While Complainant’s evidence of its brand reputation could have been more robust, in light of othe uniqueness of Complainant’s mark and the close similarity between the disputed domain and Complainant own <fipwarriors.com> address; the specialized nature of the FIP condition in cats leading to the existence of a tightly-knit online community; and the fact that both parties reside in the western part of the United States and operate in the entire country, the Panel finds it highly likely that Respondent was aware of Complainant’s mark at the time that it selected and registered the disputed domain name.
Next, Complainant does assert that Respondent is disrupting its business by competing with its own mark and website and this frames a claim for bad faith under Policy ¶ 4(b)(iii). The classic case is described in Geniebooks.com Corporation v. William E. Merritt, D2000-0266 (WIPO July 27, 2000) (“The evidence shows that Respondent merely registered this domain name as a tactical move in the struggle between Complainant and Respondent….” See also Zapier, Inc. v. Manohar Chapalamadugu / Agile CRM Inc., FA 2049262 (Forum July 23, 2023) (where the disputed “domain name resolves to a website that purports to do exactly what Complainant does”, the Panel found that Respondent is “using the disputed domain name to offer competing services under the same mark, and thus, attracting unsuspecting Zapier customers to its infringing website, and disrupting and damaging Zapier’s business.”) Here, it is apparent that the <fipwarriors.us> website provides the exact same service as that offered by Complainant under its registered FIP WARRIORS trademark (i.e., directing cat owners to resources to address the FIP condition). Respondent’s selection of the exact same mark as is used by Complainant, despite the availability of other words which would equally serve its purposes, sets out a situation that involves competition and trademark infringement. The Panel finds that this fits within the scope of Policy ¶ 4(b)(iii) and that Complainant has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii) by a preponderance of the evidence.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fipwarriors.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 19, 2023
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