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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VS Media, Inc. v. Lee Chang

Case No. D2020-3054

1. The Parties

Complainant is VS Media, Inc., United States of America (“United States”), represented internally.

Respondent is Lee Chang, United States.

2. The Domain Name and Registrar

The disputed domain name <flirt4frees.com> (the “Domain Name”) is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2020, the Registrar transmitted by email to the Center its verification response registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 20, 2020.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2020.

The Center appointed Robert A. Badgley as the sole panelist in this matter on December 24, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant operates a commercial website, at “www.flirt4free.com”, which offers extensive adult content. Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for FLIRT4FREE, registered on February 4, 2003, under USPTO Reg. No. 2,684,274 in connection with such services. The USPTO registration indicates that Complainant first used FLIRT4FREE as a mark in commerce on February 10, 1999.

The Domain Name was registered on June 5, 2018. The Domain Name currently does not resolve to an active website. For some period of time, however, the Domain Name was redirected to a website at “www.picklesandclams.com”, which site offered adult content similar to that offered by Complainant.

On October 22, 2020, Complainant’s counsel sent an email to the Registrar, asserting Complainant’s trademark rights, alleging that Respondent’s website and ownership of the Domain Name infringed on Complainant’s rights, and asking that the Registrar make contact with Respondent to effectuate the transfer of the Domain Name. The Registrar attempted at least twice to convey Complainant’s message to Respondent, but Respondent never replied. At some point between October 22, 2020, and the filing of the Complaint in this proceeding on November 16, 2020, however, Respondent’s website no longer redirected to the “www.picklesandclams.com” site.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark FLIRT4FREE through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The Domain Name incorporates the FLIRT4FREE mark in its entirety and merely adds an “s” to the end of the mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to dispute Complainant’s allegations or otherwise articulate or prove his bona fides vis-à-vis the Domain Name. On the undisputed record before the Panel, Respondent pointed the Domain Name to a commercial website offering adult content similar to Complainant’s offerings under the FLIRT4FREE mark. Such a use, which clearly targets Complainant’s trademark rights, does not give rise to rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the above-quoted Policy paragraph 4(b)(iv). It is clear from this record that Respondent targeted Complainant’s FLIRT4FREE trademark by registering a Domain Name which is essentially a slight misspelling of Complainant’s mark, and that Respondent sought to derive commercial gain, via consumer confusion, by redirecting the Domain Name to a website offering content similar to that offered by Complainant. The fact that the Domain Name currently does not resolve to an active website does not prevent a finding of bad faith.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <flirt4frees.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: December 30, 2020

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