DECISION

 

Phusion Projects, LLC v. Jade Vogt

Claim Number: FA2501002135765

 

PARTIES

Complainant is Phusion Projects, LLC ("Complainant"), represented by Robert Leighton of Goldberg Kohn Ltd., Illinois, USA. Respondent is Jade Vogt ("Respondent"), Maryland, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fourloko.net>, registered with NameCheap, 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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 17, 2025; Forum received payment on January 17, 2025.

 

On January 17, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <fourloko.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 21, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2025, 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@fourloko.net.

 

Also on January 21, 2025, 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 February 12, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the FOURLOKO trademark based on its ownership of the portfolio of trademark registrations described below and extensive use of the mark in relation to alcoholic beverages that it manufactures and sells.

 

Complainant asserts has over 100 employees in multiple countries and over $1 billion in worldwide revenue under the FOURLOKO brand.

 

Complainant further asserts that it has spent in excess of $150 million to promote its FOURLOKO brand and beverages worldwide.

 

Firstly, Complainant alleges that the disputed domain name is confusingly similar to the FOURLOKO mark in which Complainant has rights arguing that the disputed domain name consists of the FOURLOKO mark in its entirety, in combination with the generic Top-Level Domain ("gTLD"). extension <.net>.

 

Complainant submits that because the disputed domain name incorporates Complainant's identical trademark with no other distinguishing wording, this Panel should find that it is confusingly similar to Complainant's mark.

 

Additionally, Complainant argues that it is well-settled that the gTLD extension <.net> may be ignored for the purposes of comparison of the disputed domain name and Complainant's mark. See Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case D2000-0165 (holding that the domain name ROBOHELP.COM is identical to complainant's registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

 

Secondly Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing:

·       FOURLOKO is an arbitrary term when used in connection with Complainant's products and has no meaning other than as a means to identify Complainant.;

·       it can be inferred that Respondent is not commonly known by the "Fourloko" name, or confusingly similar names, because Complainant's FOURLOKO mark is so well known, citing Victoria's Secret v. Asdak, FA 96542 (Forum Feb 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant's VICTORIA'S SECRET mark because of Complainant's well-established use of the mark);

·       Respondent's identity is not available on the WHOIS for the disputed domain name, which lists the registrant's name and address as "REDACTED FOR PRIVACY"; and in such circumstances the panel may determine that Respondent is not commonly known by the disputed domain name, see Google Inc. v. Domain Name Privacy Protection, FA 1732901 (Forum June 29, 2017) ("Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially when a privacy service is shown as the registrant.");

·       Complainant is the exclusive owner of the well-known FOURLOKO trademark and has not authorized the registration or use of the disputed domain name <fourloko.net>.

 

Moreover, referring to a screen capture of the webpage to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that the screen capture illustrates that the disputed domain name does not resolve to any active website.

 

Complainant adds that the exhibited screen capture furthermore illustrates that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Victoria's Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing as follows:

 

FOURLOKO is a distinctive, famous trademark and has been owned, used and registered by Complainant for many years before Respondent registered the disputed domain name on December 28, 2024.

 

Due to the fame and notoriety of the FOURLOKO trademark, Respondent had actual or constructive knowledge of Complainant's rights in its FOURLOKO mark prior to the registration of the disputed domain name. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").

 

Upon information and belief, Respondent is using the disputed domain name with the intention of profiting from and exploiting Complainant's FOURLOKO mark.

 

The disputed domain name does not resolve to any website, and a respondent's failure to make active use of a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Victoria's Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (concluding that the respondent's failure to make active use of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).

 

Finally, and surprisingly, Complainant submits that "[t]he bad faith allegations set out in the paragraphs above, combined with the Respondent's lack of interest or rights in the fourlokomexico.com (sic) domain name, demonstrate that there is no plausible circumstance under which Respondent could legitimately register or use the fourlokomexico.com (sic) and that, therefore, the domain name was registered and is being used by Respondent in bad faith". (This Panel infers that this element of Complainant's submission contains a typographical error, and the intention was to refer to the disputed domain name.)

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a manufacturer of alcoholic beverages on which it uses the FOURLOKO trademark for which it holds an international portfolio of registered trademarks including the following United States registrations:

·       United States registered trademark FOURLOKO (stylized) registration number 3,988,581 registered on the Principal Register on July 5, 2011, for goods in international class 33;

·       United States registered trademark FOURLOKO (stylized) registration number 4,038,908 registered on the Principal Register on Oct. 11, 2011, for goods in international class 33;

·       United States registered trademark FOURLOKO (stylized) registration number 4,199,179 registered on the Principal Register on Aug. 28, 2012, for goods in international class 25;

·       United States registered trademark FOURLOKO registration number 4,428,131 registered on the Principal Register on Nov. 5, 2013, for goods in international classes 25 and 33;

 

Complainant has an established Internet presence and operates a website at <www.fourloko.com>.

 

The disputed domain name <fourloko.net> was registered on December 28, 2024, and does not resolve to any active website. The disputed domain name was registered availing of a privacy service to conceal the identity of the registrant. In response to a request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding, the Registrar disclosed that Respondent is the registrant.

 

There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

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.

 

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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the FOURLOKO trademark, established by its ownership of its portfolio of trademark registrations.

 

The disputed domain name <fourloko.net> consists only of Complainant's mark in its entirety, in combination with the gTLD extension <.net>.

 

It is well established that for the purposes of comparing a domain name at issue with a trademark relied upon by a complainant a gTLD extension, such as <.net> in this case, may generally be ignored as it would be considered by Internet users as a necessary technical requirement for a domain name.

 

This Panel finds therefore that the disputed domain name is identical to the FOURLOKO trademark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its submissions Complainant has made out an uncontested prima facie case that the Respondent has no rights legitimate interests in the disputed domain name.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced uncontested evidence that it has owned and used the FOURLOKO mark since at least July 5, 2011, when the mark was registered in the United States, whereas the confusingly similar disputed domain name was not created until December 28, 2024.

 

Complainant has asserted that it has developed an extensive market in alcoholic beverages bearing the FOURLOKO mark over 100 employees in multiple countries and over $1 billion in worldwide revenue under the FOURLOKO brand and has spent in excess of $150 million to promote its FOURLOKO brand and beverages worldwide. However, Complainant has not adduced any evidence whatsoever to support these bare assertions of the extent of its claimed goodwill and reputation.

 

Nonetheless, Complainant has exhibited a screen capture of its principal website at <www.fourloko.com> which markets its alcoholic beverages and this Panel accepts that therefore it has an established Internet presence and consequently a certain goodwill and reputation.

 

FOURLOKO is a distinctive mark, and it is implausible that the registrant of the disputed domain name was not aware of Complainant, its FOURLOKO mark and Complainant's website at <www.fourloko.com> when the disputed domain name was chosen and registered.

 

This Panel finds therefore that on the balance of probabilities, the disputed domain name was chosen and registered in bad faith to target and take predatory advantage of the Complainant and its goodwill in the FOURLOKO mark.

 

Complainant's trademark has a very distinctive character, and this Panel has found that Respondent has no rights in the disputed domain name.

 

The evidence shows that the disputed domain name does not resolve to any active website. Furthermore, the disputed domain name is identical to Complainant's trademark and differs only from Complainant's own domain name by being on the <.net> gTLD, whereas Complainant's domain name is on the more commonplace <.com> gTLD.

 

Furthermore, the exhibited screen capture of the web location to which the disputed domain name resolves shows that Respondent is not putting the disputed domain name to any active use.

 

In these circumstances, this Panel finds that the passive holding of the disputed domain name by Respondent constitutes use in bad faith for the purposes of the Policy.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

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 <fourloko.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

____________________________________________

James Bridgeman SC

Panelist

Dated: February 12, 2025