DECISION

 

ZAMBON S.p.A. v. Michael Nava / Brand Boogie LLC

Claim Number: FA2403002086492

PARTIES

Complainant is ZAMBON S.p.A. ("Complainant"), represented by Dr. Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Michael Nava / Brand Boogie LLC ("Respondent"), Nevada, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fluimucil.us>, registered with Dynadot Inc.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 2, 2024; Forum received payment on March 2, 2024.

 

On March 4, 2024, Dynadot Inc confirmed by e-mail to Forum that the <fluimucil.us> domain name is registered with Dynadot Inc. and that Respondent is the current registrant of the name. Dynadot Inc. has verified that Respondent is bound by the Dynadot Inc. 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 March 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 25, 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@fluimucil.us. Also on March 5, 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 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant uses the FLUIMUCIL mark in connection with its sale of wet cough treatments and antioxidant products. It has rights in the FLUIMUCIL mark through its registration of that mark with the United States Patent and Trademark Office (USPTO) and several other trademark agencies. Respondent's <fluimucil.us> domain name is identical or confusingly similar to the FLUIMUCIL mark because it fully incorporates the mark, merely adding the ".us" country code top-level domain (ccTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not the owner or beneficiary of a trade or service mark that is identical to the domain name, it has not been known by the domain name, Complainant has not authorized or licensed Respondent to use its mark, and Respondent is offering the domain name for sale.

 

Respondent registered or uses the domain name in bad faith. It registered the domain name primarily for the purpose of selling it to Complainant for a profit, it registered the domain name with actual knowledge of Complainant's rights in its mark, and it failed to respond to a cease-and-desist letter. 

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The FLUIMUCIL mark was registered to Complainant with the USPTO (Reg. No. 5,411,070) on February 27, 2018 (TSDR printout included in Complaint Annex 3). Complainant's ownership of this USPTO registration establishes its rights in the FLUIMUCIL mark for the purposes of Policy ¶ 4(a)(i). Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <fluimucil.us> domain name is identical or confusingly similar to Complainant's FLUIMUCIL mark. It fully incorporates the mark, merely adding the ".us" ccTLD. This change does not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, "The ccTLD ".us" designation is inconsequential to a Policy ¶ 4(a)(i) analysis.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the FLUIMUCIL mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

(ii)                      Before any notice to the respondent of the dispute, the respondent's 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;

(iii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iv)                      The respondent is 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 states that Respondent has no legitimate interests in the domain name because (i) it is not the owner or beneficiary of a trade or service mark that is identical to the domain name, (ii) it has not been known by the domain name, (iii) Complainant has not authorized or licensed Respondent to use its mark, and (iv) Respondent is offering the domain name for sale.  These allegations are addressed as follows:

 

To address the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name, Complainant conducted a search of the WIPO Global Brand Database for evidence of a domain name containing the FLUIMUCIL mark being associated with either named Respondent, with "no results shown" (WIPO printouts included in Complaint Annex 11). This evidence establishes a prima facie case as to Policy ¶ 4(c)(i), and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the domain name.

 

Complainant states that it has not authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("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.").

 

The WHOIS printout submitted as Complaint Annex 2.1 and the information furnished to Forum by the registrar list the named Respondent as the registrant of the domain name. Neither of the names given for the Respondent bears any resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain name when the identifying information provided by WHOIS was unrelated to the domain name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(iii).

 

Complaint Annex 7.1 consists of a screenshot of the <dan.com> platform to which the domain name previously redirected.  It advertises the domain name for sale at a price of USD 1,450.00. Complaint Annex 7.2 consists of a screenshot of the <dynadot.com/forsale/fluimucil.us?drefid+2071> platform to which the domain name redirected at the time the Complaint was prepared. It advertises the domain name for sale at a price of € 367.86. It is clear that Respondent is affirmatively advertising and offering the domain name for sale. A general offer of sale is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv), and is thus evidence of a lack of rights or legitimate interests. Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) ("Accordingly, the Panel finds that Respondent's general attempt to sell the disputed domain name is further evidence of Respondent's lack of rights and legitimate interests under Policy ¶ 4(a)(ii)."), Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) ("The Resolving parked page advertises the sale of the domain name with the message 'Would you like to buy this domain?'  The Panel accepts this offer as demonstrative of Respondent's willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name."). ¹ 

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site 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 web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP and usDRP panels over the years. First, Respondent is affirmatively advertising and offering the domain name for sale at a price of € 367.86 and was previously offering it for USD 1,450.00 (screenshots of sale platforms included in Complaint Annex 7), both of which amounts are substantially in excess of normal out-of-pocket costs directly related to a domain name, as described in Policy ¶ 4(b)(i). A general offer of sale of a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  Diners Club Int'l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is "available for lease or sale," evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that "the sole value of the [<www.dinersclub.com] domain name is dictated by its relation to the complainant's registered DINERS CLUB mark). 

 

Further, Respondent's registration of the domain name prevents Complainant from reflecting its mark in it. Complainant's principal web site for its FLUIMUCIL mark is located at <fluimucil.com> (screenshot included in Complaint Annex 6) but the domain name, which merely adds the ccTLD to Complainant's mark, could also be useful or valuable to Complainant for attracting Internet users to its sites.  Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. Based upon the obviously close association of the domain name with Complainant's FUIMUCIL brand, it is more likely than not that Respondent registered the domain name with that specific intent.  Its offer of sale is on its face addressed to the general public but given the close association of the domain name with Complainant's brand, Complainant was more likely its actual focus. Respondent certainly knew that its registration and use of the domain name, would prevent Complainant from registering and using the name itself, and its registration of the domain name would give it substantial leverage in any negotiations with Complainant for the sale of the domain name.  This is manifest evidence of bad faith registration and use.  Meta Platforms, Inc. v. Libin, FA 2080756 (Forum February 19, 2023) ("Respondent certainly knew that its registration and use of the domain name, would prevent Complainant from registering and using the name itself, and its registration of the domain name would give it substantial leverage in any negotiations with Complainant for the sale of the domain name.  This is manifest evidence of bad faith registration and use.").

 

On March 21, 2023, Complainant's counsel sent a cease-and-desist demand to Respondent and followed up with a request for response on several occasions after that (Copies of correspondence included in Complaint Annex 9). Respondent did not reply to any of these communications. This is further evidence of bad faith registration and use. Bloomberg Finance L.P. v. Thomas Hampson / ClickTech Solutions Ltd., FA 1850421 (Forum Aug. 19, 2019) ("the Panel acknowledges that Respondent's failure to respond to Complainant's cease and desist letter supports a finding of bad faith, especially where, as in this case, the trademark in question has substantial goodwill and reputation.").

 

Next, it is evident that Respondent had actual knowledge of Complainant and its marks when it registered the domain name in March 2023 (WHOIS printout submitted as Complainant Annex 2.12 shows creation date). The FLUIMUCIL mark is a unique, coined term that has no meaning apart from its association with Complainant. There would be no reason for any person selecting a domain name to choose this domain name except to target this Complainant. There is no question that Respondent knew of Complainant and its mark when it registered the domain name. Even if Respondent were not aware of Complainant's mark when it registered the domain name, it has undoubtedly been aware of it since March 2023 when Complainant's counsel sent the cease-and-desist letter described above. The usDRP only requires a complainant to prove bad faith registration or use. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  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).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fluimucil.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

April 1, 2024