Zyis, LTD. v. JAVIER RODRIGUEZ, LLC C/O DYNADOT
Claim Number: FA1511001649570
Complainant is Zyis, LTD. (“Complainant”), represented by James T. Burton, Kirton McConkie, Salt Lake City, Utah, USA. Respondent is JAVIER RODRIGUEZ, LLC C/O DYNADOT (“Respondent”), represented by John Di Giacomo of Revision Legal, Traverse City, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <friv.co>, registered with CCI REG S.A.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 23, 2015.
On November 30, 2015, CCI REG S.A. confirmed by e-mail to the Forum that the <friv.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. 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 December 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2015 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@friv.co. Also on December 2, 2015, 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 December 21, 2015.
On December 28, 2015 Complainant filed an Additional Submission and Respondent filed a response thereto.
On December 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In the spring of 2004, James Ian McDonald, the current Company Director of Complainant, wanted to create a universal entertainment / educational website with the aim of it becoming a trusted source for families and educators worldwide. At the time, Mr. McDonald was self-employed and sought to create such a 4852-4744-4268 website in his personal capacity, without the involvement of any corporate organization. By the spring of 2004, as the Internet had long-since been established and many recognizable and existing pre-defined words had long-since been utilized within existing Internet domain names and were, therefore, no longer available, Mr. McDonald began to consider various alternatives in an effort to select something affordable and available. Eventually, Mr. McDonald elected to pursue, and was able to acquire in May 2004, the “friv.com” domain name which was available, unique, and inexpensive.
Complainant uses the mark in connection with its online gaming site that offers a larger collection of free games. Complainant owns the FRIV mark through its trademark registration in Europe under the Office of Harmonization in the Internal Market (“OHIM”) (Reg. No. 013839287, registered July 2, 2015). Further, Complainant owns common law rights in the mark through continuous use of the mark since 2006 and has substantially invested in the mark since then. The disputed domain name is identical to Complainant’s mark, as it contains the mark in its entirety and merely adds the country code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed or authorized to use the FRIV mark. Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to divert Internet users to its own website for commercial gain.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name to direct Internet users to a website that features links to goods that compete with those of Complainant’s constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Finally, due to the fame of Complainant’s mark and Complainant’s trademark registration, Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the FRIV mark.
B. Respondent
Respondent is a limited liability company organized under the laws of the state of Delaware that provides frivolous, time-wasting computer video games on the Internet. Complainant relies on its EU trademark registration, in which Respondent intends to dispute Complainant’s trademark rights.
Friv is a generic term, as it is an abbreviation for the term “frivolous”, which is what Complainant’s and Respondent’s businesses entail, frivolous, time-wasting computer games.
Respondent has rights or legitimate interests in the disputed domain name. Respondent registered the disputed domain name prior to notice of this dispute, and with the intent to use the disputed domain name to offer frivolous computer video games. This has always been held as a bona fide use.
Respondent did not register the disputed domain name in bad faith. Respondent’s registration of the disputed domain name predates Complainant’s registered trademark rights, and thus, Respondent could not have registered the disputed domain name in bad faith.
C. Additional Submissions
Both Complainant and Respondent filed additional submissions which essentially re-iterated their previous positions.
(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.
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 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.
Complainant uses the mark in connection with its online gaming site that offers a larger collection of free games. Complainant claims that it owns the FRIV mark through its trademark registration in Europe under the OHIM (Reg. No. 013839287, registered July 2, 2015).
The Panel notes that the registration of the disputed domain name predates Complainant’s trademark registration. However, Complainant may demonstrate rights through common law. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
By late 2006, Mr. McDonald had begun providing access to games via the friv.com website and utilizing a distinctive trade dress in connection therewith. Over time, Mr. McDonald marketed and promoted the friv.com website and the FRIV mark/brand as a sole trader, expending considerable resources to do so; users began to recognize the FRIV mark/brand and the friv.com website and independently began to recommend and popularize the same.
Complainant claims to have common law rights in the FRIV mark due to its continuous use of the mark since at least 2006. Complainant relies on its statements of continuous use as a proper demonstration of its common law rights. The Panel finds that Complainant has common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant also argues that the disputed domain name is identical to Complainant’s mark, as Respondent has used the mark in its entirety and attached the ccTLD “.co.” Panels have held that the attachment of a ccTLD is of no consequence under Policy ¶ 4(a)(i). See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). Accordingly, the Panel holds that the disputed domain name is identical to Complainant’s FRIV mark under Policy ¶ 4(a)(i).
The Panel notes that 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). If so, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant posits that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Further, Complainant notes that Respondent has not been licensed or authorized to use Complainant’s mark. The Panel notes that the WHOIS information for the disputed domain name lists “JAVIER RODRIGUEZ, LLC C/O DYNADOT” as registrant of the disputed domain name. The Panel agrees with Complainant’s arguments and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Respondent did not make a bona fide offering of goods and services, 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name, 4(c)(iii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant urges that Respondent’s use of the disputed domain name to provide links to websites that offer competing goods/services to that of Complainant disrupts Complainant’s business. Thus, Complainant argues that Respondent has acted in bad faith under Policy ¶ 4(b)(iii). Prior panels have agreed with this argument. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant alleges that Respondent is likely financially gaining through the placement of these competing links, and therefore is intentionally attracting Internet users to its own website for commercial gain. The Panel agrees with Complainant’s contention and find that Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Lastly, Complainant contends that due to the fame of Complainant’s FRIV mark and due to the fact that it does hold a trademark registration, Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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)."
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <friv.co> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: January 11, 2016
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