DECISION

 

Get Weird, LLC v. Protection of Private Person / Privacy Protection

Claim Number: FA2402002083809

PARTIES

Complainant is Get Weird, LLC ("Complainant"), represented by Francesca Witzburg, New Jersey, USA. Respondent is Protection of Private Person / Privacy Protection ("Respondent"), Russian Federation.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <antisocialsocialclub.eu.com>, registered with Registrar of Domain Names REG.RU LLC.

 

PANEL

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.

 

Complainant submitted a Complaint to Forum electronically on February 14, 2024; Forum received payment on February 14, 2024.

 

On February 14, 2024, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <antisocialsocialclub.eu.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").

 

On February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@antisocialsocialclub.eu.com. Also on February 20, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 CDRP Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       Complainant is a United States company engaged in the provision of a broad range of products under the name, trademark and logo ANTI SOCIAL SOCIAL CLUB and has been so engaged since 2015 with a very wide recognition. 

2.       Complainant has registered trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO"), Registered Number 018260581, registered on November 27, 2020, and numerous other trademarks for ANTI  SOCIAL SOCIAL CLUB  registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other  trademark registration authorities (collectively "the ANTI SOCIAL SOCIAL CLUB trademark").

3.       The ANTI SOCIAL SOCIAL CLUB   trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.        On February 23, 2022, the Respondent registered the domain name <antisocialsocialclub.eu.com> ("the disputed domain name").

5.        The Complainant acquired its trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark well before the Respondent registered the disputed domain name.

6.       In registering the disputed domain name, Respondent has incorporated in it the entirety of Complainant's ANTI SOCIAL SOCIAL CLUB trademark without any authority to do so, and has added the ".eu" country code top-level domain ("ccTLD") and the generic top-level domain ".com". These additions do not negate the confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i) that is otherwise present.

7.       The disputed domain name is therefore confusingly similar to the Complainant's ANTI SOCIAL SOCIAL CLUB trademark.

8.       Respondent has caused the disputed domain name to resolve to a website that suggests falsely that it is the official European sales platform of the Complainant's ANTI SOCIAL SOCIAL CLUB trademark and business and which is calculated to induce internet users to buy products that purport to be genuine ANTI SOCIAL SOCIAL CLUB products, whereas in fact that are counterfeit products.

9.       The Respondent has no rights or legitimate interests in the disputed domain name because:

(a)       the domain name and the aforesaid website were clearly intended by the Respondent to impersonate the Complainant and to confuse internet users as to the source of the Respondent's goods and services;

(b)       Complainant has not authorized the Respondent to make any use of the ANTI SOCIAL SOCIAL CLUB trademark in a domain name or otherwise;

(c)       the Respondent has registered and used a domain name that is confusingly similar to the Complainant's trademark and which is calculated to derive advantage to the Respondent by diverting consumers from the Complainant's official website to the Respondent's website;

(d)        Respondent has not used the disputed domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) as it has caused the domain name to resolve to a website that reproduces the ANTI SOCIAL SOCIAL CLUB trademark, without a disclaimer and which is identical or similar to the Complainant's official website;

(e)       the Respondent's website is so constructed as to produce revenue from potentially confused internet users who have been put at risk of being deceived into buying counterfeit products;

(f)       Respondent has not used the disputed domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); and

(g)       there are no other circumstances that could give the Respondent a right or legitimate interest in the disputed domain name.

10.       By reason of the matters aforesaid, the Respondent has no rights or legitimate interests in the disputed domain name.

11.       The Respondent has used the disputed domain name in bad faith. That is so because:

(a)                      it is more likely than not that the Respondent had actual knowledge of the Complainant and its globally recognized trademarks when it, the Respondent, registered the domain name;

(b)                      the Respondent's website to which the domain name resolves looks identical to that of the Complainant and has been used to sell counterfeit products to defrauded internet users;

(c)                      the Respondent's website targets the Complainant and its trademarks by prominently displaying the ANTI SOCIAL SOCIAL CLUB trademark and logo;

(d)                      the Respondent has sought to conceal its contact information and used a proxy server which are illustrative of a bad faith intention;

(e)                      by diverting internet users from the Complainant's website to the Respondent's website, the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);

(f)                      the Respondent has been attracting internet traffic by causing confusion with the Complainant's trademark within the meaning of Policy ¶ 4(b)(iv);

(g)                      the evidence will show that the Respondent registered the disputed domain name with the intention of creating the appearance of an association with Complainant and its products and services; and 

(h)                      all of the relevant acts, facts, matters and circumstances show that the Respondent has used the disputed domain name in bad faith.

12. The Complainant has cited numerous and analogous prior UDRP decisions to support its contentions.

13. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish under the CDRP Policy and that the disputed domain name should be transferred from the Respondent to the Complainant.

B.  Respondent

      Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a United States company engaged in the provision of a broad range of products under the name, trademark and logo ANTI SOCIAL SOCIAL CLUB and has been so engaged since 2015 with a very wide recognition.

2.       The evidence establishes that Complainant has registered trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO"), Registered Number 018260581, registered on November 27, 2020, and numerous other trademarks for ANTI SOCIAL SOCIAL CLUB registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other trademark registration authorities (collectively "the ANTI SOCIAL SOCIAL CLUB trademark").

3.       The ANTI SOCIAL SOCIAL CLUB trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.        On February 23, 2022, Respondent registered the domain name <antisocialsocialclub.eu.com> ("the disputed domain name").

5.       Complainant acquired its trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark well before Respondent registered the disputed domain name.

6.       By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's ANTI SOCIAL SOCIAL CLUB trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been used by the Respondent in bad faith.

7.       Accordingly, the disputed domain name should be transferred to the Complainant.

 

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 or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP 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, 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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant has established by evidence that it has registered trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark by virtue of its registration of that trademark with the European Union Intellectual Property Office ("EUIPO"), Registered Number 018260581, registered on November 27, 2020, and numerous other trademarks for ANTI SOCIAL SOCIAL CLUB registered nationally and internationally with EUIPO, the United States Patent and Trademark Office ("USPTO") and other trademark registration authorities (collectively "the ANTI SOCIAL SOCIAL CLUB trademark").

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's ANTI SOCIAL SOCIAL CLUB trademark. It is clear that the domain name is confusingly similar to the trademark as the Respondent has incorporated in it the entirety of Complainant's ANTI SOCIAL SOCIAL CLUB trademark without any authority to do so, and has added the ".eu" country code top-level domain ("ccTLD") and the generic top-level domain ("gTLD") ".com". These additions do not negate the confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i) that is otherwise present, as it is in the present case.

The domain name means and would be interpreted by internet users to mean that it is a domain name of the Complainant because it uses its trademark and purports to relate to the official activities of the Complainant under its trademark. This emphasizes the notion that the domain name is a domain name of the Complainant or was created with the approval of the Complainant and that it will lead to the official website of the Complainant and genuine products of the Complainant, none of which is correct.

The disputed domain name is therefore confusingly similar to the Complainant's ANTI SOCIAL SOCIAL CLUB trademark.

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:

 

(a)       the Respondent has chosen to take the Complainant's trademark and to use it in the disputed domain name, making only the minor additions mentioned above, generating the clear impression that it referring to and invoking the Complainant's trademark and that the Respondent intended to use the domain name for an unauthorized purpose involving the use of the Complainant's branded product name. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;

(b)       the Respondent registered the disputed domain name on February 23, 2022 which was well after the Complainant had acquired its trademark rights in the ANTI SOCIAL SOCIAL CLUB trademark; 

(c)       it is clear from the evidence that the intention of the Respondent was to invoke the Complainant's name, trademark and business and to copy them, which cannot conceivably give rise to a right or legitimate interest in the domain name in any way;

(d)        having registered the disputed domain name, the Respondent set about creating a website that prominently displays the Complainant's ANTI SOCIAL SOCIAL CLUB trademark and products bearing that name and trademark which on the evidence and probabilities are counterfeit, showing that the domain name and website have been used to mislead internet users and extract money from them under the false pretense that they would be buying genuine ANTI SOCIAL SOCIAL CLUB products;

(e)       this conduct was a clear infringement of the Complainant's ANTI SOCIAL SOCIAL CLUB trademark;

(f)       the evidence on the foregoing matters is contained in the Complainant's Annex 6. The Panel has examined that annex and the details contained in it. Suffice to say that it shows that the Respondent has used its domain name and website to display and offer for sale a range of products for which the Complainant is well known. The products include caps, hoodies and tee shirts. The Respondent has also added the names and logos of VISA and Mastercard, showing that it intended that internet users could and should buy the displayed products at marked prices and pay for them by credit card. The Respondent has also added a copyright symbol to assert falsely by that means that it is the lawful owner of the brand displayed which is in fact the brand and trademark of the Complainant;

(g)       this evidence shows that the Respondent has no right or legitimate interest in the domain name which is being used to present this false narrative;

(h)       in view of the Respondent's name, it is impossible to conclude that it is commonly known by the domain name;

(i)       the evidence also shows that the use made of the domain name by the

Respondent is not a bona fide offering of goods or services within the meaning of Policy¶4(c)(i); it cannot be bona fide when it is based on a falsehood;

(j) the evidence also shows that the domain name is not being used for a

legitimate non-commercial or fair use; the use of the domain name has been demonstrated to be illegitimate because it is being used to mislead internet users; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend falsely that it is being used with the approval of the Complainant as trademark owner;

(k) the evidence also shows that the domain name is being used and was intended to be used to pass the Respondent off as the Complainant;

(l) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain name or to use its trademark in any way;

(m) all of the grounds relied on by the Complainant have been made out on the evidence;

(n) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain name.

 

All of these matters go to make out the prima facie case against the Respondent.

 

The Complainant has thus made out the second of the three elements that it must establish.

 

As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

Registration or Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered or used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has used the disputed domain name in bad faith on several grounds referred to above and it is not necessary to repeat them.

It is clear that the Complainant has made out each and every of the grounds relied on.

That is so, first, because the evidence shows that it is more likely than not that the Respondent had actual knowledge of the Complainant and its globally recognized trademarks when it registered the domain name. The Complainant's name and brand name are very well-known and the Respondent has set about targeting and copying them. It is inconceivable that it could have embarked on the detailed pretence shown by the evidence if it did not have actual knowledge of the Complainant and its trademark. The Respondent clearly knew what its target was and set about aiming at it, which amounts to bad faith use.

Secondly, it has used the domain name by setting about creating a website which is a copy of the Complainant's website, advertises its branded goods and in every way pretends that it is the Complainant or is acting with its approval and that it is lawfully offering for sale genuine products of the Complainant when in fact it is offering counterfeit products for sale.

Thirdly, the Respondent obviously passed itself off as the Complainant, directed internet users away from the Complainant and to itself and tried to extract money from internet users by misleading them, all the time trying to create the false impression that its website originated with and was approved by or linked to the Complainant. If that conduct were not bad faith use, those words would have no meaning.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the conduct that the Respondent has engaged in since registering the domain name, the Respondent used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has correctly cited several prior analogous UDRP decisions that support its contentions on all of the elements required to be proved. It has also cited the decision in Get Weird, LLC v. Protection of Private Person / Privacy Protection, FA 2304002039580, concerning the same parties and the same domain name where the Complainant prevailed. That decision also shows that the Respondent is a repeat offender, putting the element of bad faith use beyond argument.

 

The Complainant has therefore shown all of the elements it is required to prove under the Policy and is entitled to the relief that it seeks.

 

DECISION

Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <antisocialsocialclub.eu.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: March 14, 2024