Desifun, LLC v. axmath moosa
Claim Number: FA1701001714398
Complainant is Desifun, LLC (“Complainant”), represented by Steven L. Rinehart of Western IP Law, Utah, USA. Respondent is axmath moosa (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <belikebro.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2017; the Forum received payment on January 26, 2017.
On January 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <belikebro.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2017 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@belikebro.com. Also on January 27, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is the creator of an Internet comic-strip character “Be Like Bro.” Complainant uses the BE LIKE BRO mark in conjunction with the publication of Internet content on social media. Complainant asserts common law rights to the BE LIKE BRO mark, showing secondary meaning based on fame and continuous use of the mark since June 2009. Furthermore, Complainant applied to register the BE LIKE BRO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 87,119,939, filed on July 28, 2016). Respondent’s <belikebro.com> is confusingly similar to Complainant’s BE LIKE BRO mark because it incorporates the mark in its entirety, eliminating the spaces and adding the “.com” generic top level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in <belikebro.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the mark, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Respondent’s <belikebro.com> resolves to a webpage displaying Complainant’s content and mark in an attempt to pass-off being Complainant. Furthermore, Respondent made an offer to sell Complainant the domain name in the sum of $10,000.
iii) Respondent registered and is using <belikebro.com> in bad faith. The disputed domain name attempts to impersonate Complainant, thereby creating confusion among Internet users looking for Complainant’s Internet content. Respondent has also offered to sell the domain name to Complainant for $10,000, further evincing bad faith registration. Respondent registered <belikebro.com> with actual knowledge of Complainant and its rights to the BE LIKE BRO mark.
B. Respondent
Respondent did not submit a response. However, Complainant submitted an email correspondence between Respondent and Complainant. The Panel notes that Respondent registered <belikebro.com> on January 28, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is the creator of an Internet comic-strip character “Be Like Bro.” Complainant uses the BE LIKE BRO mark in conjunction with the publication of Internet content on social media. Complainant asserts common law rights to the BE LIKE BRO mark, showing secondary meaning based on fame and continuous use of the mark since June 2009. “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015). Additionally, “there is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.” Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007). Complainant has included various evidence of the popularity and notoriety of its name throughout various social media websites. Complainant claims it applied to register the BE LIKE BRO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 87,119,939, filed on July 28, 2016). The Panel sees that “Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and . . . may rely on common law or unregistered trademarks that it can make out.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). The Panel finds that Complainant has sufficiently demonstrated to establish its common law rights to Complainant's BE LIKE BRO mark.
Complainant maintains that Respondent’s <belikebro.com> is confusingly similar to Complainant’s BE LIKE BRO mark because it incorporates the mark in its entirety, eliminating the spaces and adding the “.com” generic top level domain (“gTLD”). “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.” Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015). Furthermore, “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Here, the Panel finds that Respondent’s <belikebro.com> is confusingly similar to Complainant’s BE LIKE BRO mark.
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 (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 (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.”).
Complainant contends that Respondent has no rights or legitimate interests in <belikebro.com>. To support its argument, Complainant states that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “axmath moosa.” Absent a response, Panels have found that WHOIS information is sufficient to determine that Respondent is not commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). Lacking evidence to the contrary, the Panel finds that Respondent is not commonly known by <belikebro.com>.
Complainant avers that it has not authorized or licensed Respondent to use the mark, nor is Respondent affiliated with Complainant. Complainant indicates that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant illustrates that Respondent’s <belikebro.com> resolves to a webpage displaying Complainant’s content and mark in an attempt to pass-off being Complainant. “It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003). The Panel finds that Respondent’s passing off behavior does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007).
Furthermore, Complainant states that Respondent made an offer to sell Complainant the domain name in the sum of $10,000. In University of Rochester v. Park HyungJin, the Panel found that “[r]espondent’s willingness to sell this [disputed] domain name in excess of out-of-pocket registration costs weighs against [r]espondent’s case for rights or legitimate interests in the domain name.” FA 1587458 (Forum Dec. 9, 2014). Therefore, the Panel concludes that Respondent’s willingness to sell a domain name to Complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007).
Complainant states that Respondent made an offer to sell the domain name in the sum of $10,000, further evincing bad faith registration. In George Weston Bakeries Inc. v. McBroom, the Panel concluded that the respondent registered and was using the disputed 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. FA 933276 (Forum Apr. 25, 2007). “[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.” Therefore, the Panel concludes that “[R]espondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).” Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015).
Complainant maintains that Respondent registered and is using <belikebro.com> in bad faith. The Panel recalls that the disputed domain name resolves to a webpage displaying Complainant’s mark and Internet content. Complainant asserts that the disputed domain name attempts to impersonate Complainant, thereby creating confusion among internet users looking for Complainant’s internet content. Panels have typically found bad faith registration when respondents attempt to pass themselves off as complainants or associates thereof. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). In the instant case, the Panel holds that Respondent registered <belikebro.com> in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent registered <belikebro.com> with actual knowledge of Complainant and its rights to the BE LIKE BRO mark. Panels have generally found bad faith registration where respondents have actual knowledge of complainant’s rights to a mark. See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, the Panel infers that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name." Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <belikebro.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: Mach 6, 2017
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