Southwest Airlines Co. v. FlokiNET Ltd WhoisProtection / FlokiNET Ltd
Claim Number: FA2304002038701
Complainant is Southwest Airlines Co. (“Complainant”), represented by Matthew S. Anderson of Munck Wilson Mandala, LLP, Texas, USA. Respondent is FlokiNET Ltd WhoisProtection / FlokiNET Ltd (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southwoke.com> (“Domain Name”), registered with Tucows Domains Inc..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 4, 2023; Forum received payment on April 4, 2023.
On April 4, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <southwoke.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2023 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 firstname.lastname@example.org. Also on April 10, 2023, 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 May 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Southwest Airlines Co. operates one of the largest airlines in the United
States. Complainant asserts rights in the SOUTHWEST mark based upon
registration with the United States Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 1,230,381, registered March 8, 1983). Respondent’s <southwoke.com> is confusingly similar to Complainant’s SOUTHWEST
mark because it includes the first “south”
portion, changes three letters of the word “west” to “woke” and adds the
generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <southwoke.com> domain name. Respondent is not licensed or authorized to use Complainant’s SOUTHWEST mark and is not commonly known by the Domain Name. Respondent also does not use the Domain Name for any bona fide offering of goods or services. Rather, Respondent, through the use of Complainant’s marks, images of Complainant’s employees and trade indicia, seeks to pass itself off as Complainant.
Respondent registered and uses the <southwoke.com> domain name in bad faith. Respondent disrupts Complainant’s business by operating a competing website. Respondent creates a likelihood of confusion by attempting to pass off as Complainant. Respondent registered the Domain Name using false WHOIS information. Respondent had actual or constructive knowledge of Complainant’s rights in the SOUTHWEST mark.
Respondent failed to submit a Response in this proceeding.
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all required elements of its claim, and thus its complaint must be denied.
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 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”).
Complainant has rights in the SOUTHWEST mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,230,381, registered March 8, 1983). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
In light of the Panel’s dispositive finding on the issue of rights and legitimate interests, the Panel declines to address the question of confusing similarity.
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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 asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SOUTHWEST mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
The Domain Name consists of a play on the SOUTHWEST name, replacing the “west” element with “woke”. The term “woke” can be used positively to refer to someone who is aware of racial (and increasingly social) inequities, but is increasingly used as an insult to describe a person or entity who is engaged in overzealous or performative left-wing behavior.
The Domain Name resolves to a website (“Respondent’s Website”) that provides non-commercial criticism of the Complainant’s engagement with Diversity, Equity and Inclusion policies as well as its (apparent) support for LGBTI rights and the Black Lives Matter movement. In short, it asserts that Complainant has “gone woke” and criticizes Complainant for its efforts in this space. It includes a section purportedly from the Complainant’s CEO that begins “Here at Southwoke, we’re fully committed to DEI, ESG, LGTBQ+, BLM, BIPOC, Allyship, #MeToo and every other trendy woke acronym or hashtag you can think of…”
There is no evidence that the Respondent competes with the Complainant, has sought to sell the Domain Name or seeks any commercial gain from the Respondent’s Website, rather Respondent is using a Domain Name that refers to Complainant, but contains a word (“woke”) that in the context would be seen as derogatory, to offer what appears to be genuine (in the sense that it is not a front for commercial gain) criticism of Complainant’s corporate policies.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ¶ 2.6, states, in response to the question “Does a criticism site support respondent rights or legitimate interests?” that:
“As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website).
In the present case the Respondent is offering non-commercial criticism of Complainant from a website that contains a term that would be read as derogatory: To put it another way the Domain Name does not create an impermissible risk of user confusion through impersonation as no ordinary consumer would think that Complainant operates a website at <southwoke.com>. While the Panel notes the Complainant’s arguments that the Respondent’s Website reproduces images and marks connected to Complainant, that by itself does not result in Respondent lacking rights or legitimate interests in a domain name containing a clear derogatory term used for non-commercial criticism.
For the foregoing reasons, the Respondent has shown a right and legitimate interest in the Domain Name and the Complainant has failed to make out the second of the three elements that it must establish.
The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable. ”). Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”)
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <southwoke.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: May 10, 2023
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