DECISION

 

FanHero, LLC v. Hendrik Nitsch / HypeFlow

Claim Number: FA2401002079285

 

PARTIES

Complainant is FanHero, LLC ("Complainant"), represented by Katlyn M. Moseley of Faegre Drinker Biddle & Reath LLP, District of Columbia, USA. Respondent is Hendrik Nitsch / HypeFlow ("Respondent"), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fanhero.app>, registered with Cloudflare, Inc.

 

PANEL

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.

 

Dr. Katalin Szamosi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 16, 2024; Forum received payment on January 16, 2024.

 

On January 17, 2024, Cloudflare, Inc. confirmed by e-mail to Forum that the <fanhero.app> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 January 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2024 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@fanhero.app. Also on January 18, 2024, 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.

 

A timely Response was received and determined to be complete on January 22, 2024.

 

On January 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed dr. Katalin Szamosi 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Complainant argues that under Policy ¶ 4(a)(i) Respondent's <fanhero.app> domain name (hereinafter referred to as "Domain Name") is identical to Complainant's FANHERO mark. In support of this Complainant asserts that

 

·       FanHero, LLC was founded in 2016 and is a trailblazing end-to-end video technology cloud company that provides an all-in-one platform for creators to create, share, engage community members, and monetize content;

·       has rights in the FANHERO mark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g., Registration Number 5568122, filed February 22, 2017 and registered September 25, 2018);

·       has rights in the FANHERO mark based upon registration with the World Intellectual Property Office (e.g., International Registration Number 1 771 067 pursuant Madrid Protocol designating Brazil, Benelux, China, Germany, Spain, France, the United Kingdom, India, Mexico, and Portugal, registered November 7, 2023);

·       it owns fanhero.com and has been using it since 2016;

·       the Domain Name was registered on January 28, 2023 long after the registration of the fanhero.com domain name and the trademark protecting the FANHERO mark was registered with the USPTO;

·       Domain Name identical to Complainant's trademarks, with the limited and irrelevant addition of the generic top-level domain ".app".

 

2.       Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that

 

·       Respondent's use of the Domain Name does not constitute a bona fide offering of goods or services pursuant to Policy;

·       Domain Name is being used to advertise a content creation platform for creators of pornographic content under the identical FANHERO mark;

·       at the time Respondent registered the Domain Name, it had no trademark or intellectual property rights in the domain name;

·       Respondent is not engaged in legitimate noncommercial or fair use pursuant to Policy;

·       Respondent is diverting Internet users away from the services offered by Complainant and is tarnishing Complainant's trademarks by associating the FANHERO mark with the pornography industry;

 

 

3.       Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that

·       Respondent had constructive knowledge of commonly known FANHERO mark of the Complainant;

·       Complainant has not authorized or had control over Respondent's use of the Domain Name or any activities associated with the Domain Name;

·       Domain Name resolves to a website that advertises pornographic content under the FANHERO trademark; 

·       the choice of the Respondent to wholly incorporate the FANHERO Mark is evidence of opportunistic bad faith;

·       Domain Name directs Internet users to a pornographic website, from which Respondent likely derives a financial benefit is evidence of bad faith;

·       Respondent is evading Complainant's attempts to contact Respondent to address this dispute and the fact that Respondent transferred the Domain Name to a new registrar after Complainant filed and abuse report is evidence of bad faith.

 

B. Respondent

Respondent argues that the registration of the Domain Name was not done with any malicious intent and it doesn't infringe upon the trademark rights of the Respondent in the United States.

 

Respondent asserts that they are a European company and the holders of the "FanHero" trademark rights in Europe.

 

Respondent contends that the Domain Name was registered in good faith.

 

Respondent contends that there is no likelihood of confusion or conflict with the trademark rights of the Complainant, as their rights are specifically for the US market.

 

On January 24, 2024 the Panel issued an Additional Submission Order to the Respondent and called upon the Respondent to file and Additional Submission to correct the flaws of the Response including to file evidence substantiating the assertions in the Response.

 

In the Additional Submission of the Respondent the Respondent sent a print out from the website of the European Intellectual Property Office which contained EUTM file information on the European Trademark application number 018950127 for the "FANHERO" figurative mark filed on November 13, 2023 (hereinafter referred to as "Application").

 

FINDINGS

For the reasons set out below the Panel finds for Complainant and orders a transfer of the <fanhero.app> domain name.

 

DISCUSSION

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 and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the FANHERO mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,568,122, registered on September 25, 2018). Registration of a mark with the USPTO is generally sufficient in demonstrating rights in the mark under Policy ¶ 4(a)(i)." See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). The Panel notes that the FANHERO mark Reg. No. 1 771 067 registration with the World Intellectual Property Office was registered after the registration of the Domain Name, however since Complainant provides evidence of the USPTO registration of the FANHERO mark, the Panel finds that Complainant has rights in a mark under Policy 4(a)(i).

 

Complainant argues that Respondent's Domain Name is identical or confusingly similar to Complainant's FANHERO mark. Generally, under Policy ¶ 4(a)(i) adding ".com" gTLD is can be disregarded when analyzing the confusing similarity. Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess, FA 2002904 (Forum Aug. 23, 2022) ("UDRP Panels have unanimously accepted that the inclusion of the ".com" gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights."). Also See Google LLC v. Steven Ng, FA 1998215 (Forum Aug. 29, 2022) ("The addition of the ".com" gTLD is irrelevant in this analysis of confusing similarity."). The Domain Name incorporates Complainant's FANHERO mark while appending the generic term ".app" gTLD. The Panel is on the opinion that ".app" gTLD falls under the same category as ".com" gTLD. Therefore, the Panel finds that the Disputed Domain is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

The Panel accordingly finds that Complainant has satisfied the first element of the Policy.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name to then enable the burden to, in effect, shift to Respondent to show it does have rights or legitimate interests.

 

Complainant asserts Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use its FANHERO mark in the 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 Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name).

 

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 PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)."). Here, the WHOIS information identifies Respondent as "Hendrik Nitsch/ HypeFlow" Coupled with Complainant's unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

Additionally, Complainant asserts that Respondent is not using the Disputed Domain for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), diverting users for commercial gain while using the FANHERO mark with the pornography industry is not a bona fide offering of goods or services, nor any noncommercial or fair use. See National Spiritual Assembly of the Bahá'ís of the United States v. Moniker Privacy Services, FA 1644005 (Forum Dec. 1, 2015) ("Complainant claims Respondent fails to use the domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains adult-related content, including links to commercial pornographic websites, online dating, and news related to porn actors and the porn industry. Hosting adult oriented material on a confusingly similar domain shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c) (iii).").

 

The Panel notes that Complainant's attached screenshot to which the Domain Name resolves, these show that Respondent diverts users for commercial gain while promoting pornographic and adult oriented material.

 

Finally, the Panel finds that the Application is insufficient to prove that the Respondent has rights and legitimate interests in the Domain Name. The Application contains no reference to the Respondent, in fact the section indicating the owner of the Application, the following notice is given "For security and data protection purposes, the applicant information will be available once the basic application fee is paid". The Application was filed on November 13, 2023, which indicates that the application fee was not paid in more than 2 months. The Panel notes that even if the Application could be linked to the Respondent an application in itself wouldn't be sufficient to establish rights and legitimate interests in the Domain Name, because first and foremost the mark applied for protection has not been registered.

 

The Panel accordingly finds that Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the Domain Name in bad faith because it incorporates the Complainant's FANHERO mark and is diverting Internet consumers to a pornographic website. See Dell Inc. v. Jason Hoad, FA 1880790 (Forum Feb. 28, 2020) ("The disputed domain name has been registered and is being used in bad faith by the Registrant pursuant to Policy ¶¶ 4(b)(iii) and (iv) as it reproduces Complainant's registered DELL mark in an attempt to attract internet users to the disputed domain name for commercial gain as well as such registration and use of the disputed domain name associated with adult-oriented and pornographic material, which has no relation whatsoever with Complainant's activities, is also disrupting of Complainant's business."). See also Dr. Aomawa Shields v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA 1705259 (Forum Jan. 6, 2017) ("Complainant claims Respondent registered and uses the domain name in bad faith because the resolving websites tarnishes Complainant's reputation in a sexually disruptive manner (if not pornographic). The resolving website includes links related to adult entertainment and this is harmful to Complainant's education services to middle school women of color.… This Panel will find bad faith registration and use under Policy ¶4(b)(iv) because Respondent gets click through fees from the resolving sexually explicit web page."). See Chicago Southland Convention & Visitors Bureau v. Daniel, FA 1679347 (Forum July 26, 2016) ("Respondent uses the disputed domain name to tarnish the reputation of Complainant and, as such, exemplifies bad faith per Policy ¶ 4(a)(iii).... Respondent uses the disputed domain name on pornographic web sites. Registering and subsequently using the disputed domain in a manner that misleads Internet users into believing the Complainant is somehow related to a pornographic web site is what offends the Policy.").

 

Complainant argues that Respondent evading Complainant's attempts to contact Respondent to address this dispute. See Fitness International, LLC v. Dan Lee, FA 1995850 (Forum June 7, 2022) ("Complainant contends that Respondent's failure to respond to its demand letter or other efforts at communication is evidence of bad faith under Policy ¶ 4(a)(iii). In the circumstances of the present case, the Panel considers failure to respond to Complainant's demand letter to be further evidence of bad faith, even if Respondent submitted a Response in the present case.").

 

The Panel accordingly finds that Complainant has satisfied the third and final element of the Policy.

 

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 <fanhero.app> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dr. Katalin Szamosi, Panelist

Dated: January 31, 2024