FBomb Clothing c/o Joel Jordan v. Domainly.com
Claim Number: FA0902001245522
Complainant is FBomb
Clothing c/o Joel Jordan (“Complainant”),
represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fbomb.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2009.
On February 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fbomb.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 24, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 24, 2009.
On March 02, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that it began doing business as FBCOM in late 2002, as a clothing company that retails sportswear for athletes participating in extreme outdoor sports, including snowboarding, dirt-biking, surfing and wakeboarding.
contends that on August 13, 2002 it registered its business name with the San
Diego County Recorder and that on October 1, 2002, it was granted a State
Seller’s permit to conduct business by the State of
Complainant argues that it has common-law rights in the Mark FBOMB because it has in the past used the Mark in connection with Internet based retail business, registered the name with government of the State of California, sold tangible items imprinted with the Mark, and has established rights in the Mark through use in commerce online. The Mark has acquired secondary meaning sufficient to satisfy the UDRP.
On, or about, May, 2002, Complainant’s technical advisor, Joel Jordan, registered the domain name in dispute <fbomb.com> with the Registrar in this action Go Daddy, and Complainant began selling its Fbomb clothing line online using the Disputed Domain and the mark FBOMB before November, 2002. Complainant asserts that it imprinted its clothing with the FBOMB Mark. Complainant attaches Way Back Machine Screenshot from <InternetArchive.org> dated November, 2002 showing the use of the FBOMB mark.
Complainant asserts that the Disputed Domain was in the control of Complainant from 2002 until mid-2008, when Complainant mistakenly and inadvertently failed to pay the renewal fees for the Disputed Domain with its registrar Go Daddy and the Disputed Domain expired.
Complainant contends that upon information and belief, Respondent either immediately registered the Disputed Domain from a massive list of expired domain names to which Respondent subscribed, or purchased the Disputed Domain in auction from another third-party whom Respondent knew had registered the Disputed Domain in this fashion.
Complainant asserts that, upon information and belief, Respondent is a prolific cybersquatter who registers countless domain names in an attempt to capitalize on the trademarks of others which domain names Respondent uses for no legitimate purpose, and which domain names Respondent registers knowing said domain names are likely abandoned by mistake in hopes of reselling the domain names at extortionary profits to their legitimate owners or their competitors.
Complainant argues that the Disputed Domain began resolving immediately to the Respondent’s web server with new content announcing that Respondent controlled the Disputed Domain and advertising that the domain name was for sale. Furthermore, Respondent notes in his registration that the Disputed Domain is for sale.
Complainant informs that its technical officer, Joel Jordan, contacted Respondent in mid-2008 by email shortly after losing the Disputed Domain, informing Respondent, “I desperately need to get my domain back,” to which Respondent replied, “The domain [Disputed Domain] is for sale, it was picked up at auction for a substantial closing amount. Submit your highest offer for consideration. If terms can be reached a transfer can be made immediately at GoDaddy.com.”. Complainant then proceeded to explain to Respondent in subsequent emails, “I am desperately saddened by my lapse of attention which caused me to lose my domain . . . Please, please, please understand my predicament. This was my domain . . . I am sick with remorse and I just need to get it back.”
After several further email exchanges, Respondent informed Complainant that Respondent purportedly had an offer on the Disputed Domain for $1,250 from another party and, before receiving Respondent’s email soliciting an offer for $1,250, Complainant bid $1,500 on the Disputed Domain at <sedo.com> in hopes of reacquiring it before it was transferred.
Complainant informs that in other emails annexed to this Complaint, Complainant and Respondent agreed on a purchase price of $1,500 for the Disputed Domain and entered into a purchase contract at that amount. As Complainant was preparing to remit the funds necessary to reacquire the Disputed Domain, Respondent received competing bids on the Disputed Domain at <sedo.com> which exceeded the amount that Complainant and Respondent had agreed that Complainant would pay to reacquire the Disputed Domain.
Complainant contends that Respondent knew the Disputed Domain had become valuable and distinctive, as evidenced by Respondent’s own acquisition of the Disputed Domain, and Respondent’s immediate attempt to sell the Disputed Domain.
Complainant argues that Respondent had no purpose in registering the Disputed Domain other than to resell immediately.
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain as Respondent has unlawfully registered the Disputed Domain in bad-faith, knowing and scheming to acquire it from a party with legitimate rights in it who had likely allowed it to expire by mistake. Complainant states that Respondent has not used the Disputed Domain for any legitimate purpose, and made no preparations to use the Disputed Domain. And that Respondent’s only purpose in registering the Disputed Domain was to sell it for an excessive profit, which Respondent is now attempting.
Complainant states that Respondent’s registration and use of the Disputed Domain is in bad faith, and illegitimate because Respondent had knowledge, or should have had knowledge, when it registered the Disputed Domain that Complainant had rights in the Disputed Domain. Complainant contends that Respondent intended only to capitalize on whatever good-will existed in the Disputed Domain by reselling it and depriving its legitimate owner of the benefits of the good-will built in the Disputed Domain.
Respondent argues that the Disputed Domain Name was purchased for a substantial closing bid amount with GoDaddy on July 2nd, 2008.
Respondent contends that FBomb is a common generic slang term for the ‘F’ swear word: http://onlineslangdictionary.com/definition+of/f-bomb.
Respondent states that Joel Jordon first contacted him on July 9th , 2008 to try and reacquire the domain, stating: “…This was my domain... actually it was a friends and I was in charge of it…”.
Respondent states that there were multiple messages exchanged with no mention of any trademark violation or filing.
Respondent asserts that at no point in time was the Complainant told that the Disputed Domain Name would be sold to him, as Respondent supports that all transactions are open until paid in full.
Respondent alleges that after months of waiting for Complainant to acquire the funds to purchase the domain, Complainant contacted him on January 20, 2009 stating he had $1500 to purchase the Disputed Domain Name.
Respondent argues that Complainant then submitted an offer in the amount of $1500 via <sedo.com> and that, upon doing so he agreed to its T&C: https://sedo.com/about/policy.php?page=terms_us&tracked=&partnerid=&language=us and to the following confirmation upon submitting the offer: “All bids are binding. Should this bid win the auction you are obligated to complete the transaction at the bid amount. Should your bid win the auction we will assist you in the transfer of the domain, through Sedo's escrow service. This service is free of charge and offers personal assistance with the secure transfer of the domain name.”
Respondent argues that, once Complainant submitted the offer at SEDO an auction was started as other bidders where interested in the Disputed Domain Name. Respondent informs that the Auction closed at SEDO on January 30, 2009 in the amount of $4,101 and that Complainant was the winning bidder.
Respondent argues that during the auction Complainant contacted him threatening legal action but just like Complainant, he had entered into an agreement at SEDO where he was bound to sell the domain to the biding winner.
Complainant asserts rights in the FBOMB mark, but does not hold a corresponding registered trademark. Nevertheless, a trademark registration is not necessary to establish rights in a mark. Rather, Complainant can establish common law rights in the FBOMB mark if it establishes that the mark has acquired secondary meaning as a source identifier of its business products and services. See Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
asserts that it has been doing business as FBCOM since late 2002, however
Complainant consistently refers to itself in the Complaint as FBomb Clothing
and FBomb. Complainant alleges it has
sold retail sportswear since that time, and previously registered and used the <fbomb.com> domain name for this purpose until the
registration mistakenly lapsed in 2008 and Respondent registered it. Complainant has submitted as evidence of its
use of the FBOMB mark the following: its registration of its fictitious
business name with the San Diego County Recorder; its California State Seller’s
Permit; a sample manufacturer’s invoice; and screenshots of its website
resolving from the <fbomb.com>
domain name as they appeared in 2002 and 2008.
(These screenshots were provided by using the Way Back Maching from
InternetArchive.org.) Based upon this
evidence of Complainant’s Internet-based business, the Panel concludes that
Complainant has established sufficient secondary meaning the FBOMB mark to
establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s
VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers
sufficient to establish common law rights where the complainant had been
continuously and extensively promoting a real estate development under the mark
for several years); see also
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
<![if !supportLists]>(1) <![endif]>the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
<![if !supportLists]>(2) <![endif]>the Respondent has no rights or legitimate interests in respect of the domain name; and
<![if !supportLists]>(3) <![endif]>the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established sufficient secondary meaning the FBOMB mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <fbomb.com> domain name is identical to its FBOMB mark. The Panel finds that the sole addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to this analysis, and therefore conclude that the two are identical pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel finds that the Complainant has established the first element of the Policy.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Though Complainant does not argue such, the Panel finds that Respondent is not commonly known by the <fbomb.com> domain name pursuant to Policy ¶ 4(c)(ii) because the WHOIS information identifies Respondent as “Domainly.com,” and Respondent has not asserted otherwise. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
According to Complainant, Respondent has used the <fbomb.com> domain name solely to offer it for sale, first generally and later through an auction. The Panel finds that Respondent has not used the <fbomb.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Complainant contends that it originally registered and used the <fbomb.com> domain name, but inadvertently allowed the registration to lapse. Respondent allegedly registered the <fbomb.com> domain name on that same day, and immediately began offering it for sale. The Panel finds that this further evidences Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that the Complainant has established the second element of the Policy.
Complainant contends that Respondent has continually offered to sell the <fbomb.com> domain name, first to individuals and then to the general public by means of an auction. Complainant further argues that by utilizing an auction, Respondent is attempting to maximize its profits, which the Panel finds the amount to be in excess of Respondent’s out-of-pocket registration costs. Since Respondent has allegedly not used the <fbomb.com> domain name for any reason other than to offer it for sale, the Panel concludes that Respondent registered the <fbomb.com> domain name primarily for the purpose of selling it. Based on this analysis, the Panel concludes that Respondent registered and is using the <fbomb.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
Complainant has submitted evidence that it originally registered and used the <fbomb.com> domain name until the registration inadvertently lapsed, at which point Respondent immediately registered it. The Panel finds this to be further evidence that Respondent registered and is using the <fbomb.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).
Accordingly the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fbomb.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: March 16, 2009