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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jake's Fireworks Inc. v. Domains By Proxy, LLC / W S, WIS INC

Case No. D2021-2519

1. The Parties

The Complainant is Jake's Fireworks Inc., United States of America (“United States”), represented by Hovey Williams LLP, United States.

The Respondent is Domains By Proxy, LLC, United States / W S, WIS INC, Cayman Islands, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <jakesfirework.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 12, 2021.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2021.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 4, 2021. 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

The Complainant is the North American wholesale distributor of fireworks JAKE’S FIREWORKS.

The Complainant obtained registrations for the trademark JAKE’S FIREWORKS, including the United States Trademark Registration Number 4,466,263, registered on January 14, 2014, which has been in use in commerce since 1981.

The Complainant is also the holder of the domain name <jakesfireworks.com>, registered on March 24, 1999.

The Respondent registered the disputed domain name <jakesfirework.com> on May 3, 2021.

According to the Complaint, the disputed domain name was resolving to a website stating, “Attackers might be trying to steal your information from jakesfirework.com” and then to a pay-per-click parked website. In addition, the disputed domain name was used in connection to a fraudulent email scheme, in which the Respondent tried to impersonate the Complainant for financial gain.

The Panel accessed the disputed domain name on October 15, 2021, at which time the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has used JAKE’S FIREWORKS as a trademark and trade name for more than four decades. The Complainant use of JAKE'S FIREWORKS on the Internet is prominent. The disputed domain name is confusingly similar to the Complainant’s JAKE’S FIREWORKS trademark, only differentiating by the omission of an “s” at the end of the domain name.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never given the Respondent license or authorization of any kind to use its JAKE’S FIREWORKS trademark either on the Respondent’s website or within the disputed domain name. Numerous panels in past UDRP disputes have declared that where a domain name is found to be confusingly similar to a complainant’s trademarks, and the complainant has not licensed or authorized the respondent to use its trademarks, these findings alone are sufficient to constitute a prima facie showing that the respondent did not have rights or legitimate interests in the disputed domain name. There is no evidence that, before the Respondent received notice of this dispute, the Respondent made use of, or made demonstrable preparations to use its domain name in connection with a bona fide offering of goods or services. Rather, the Respondent’s domain name resolves to a website that warns online users that “Attackers might be trying to steal your information from jakesfirework.com...”. It is well settled that this kind of attempt by a respondent to lure in Internet users by passing itself off as the complainant is evidence that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has attempted to trick at least one of the Complainant’s customers into misdirecting a payment on an invoice from the Complainant to the Respondent. As part of its scheme, the Respondent held itself out as the Complainant in an email to the Complainant’s customer by using the Complainant’s trademark and an email address that is deceptively close to the Complainant’s email address. This cannot constitute a bona fide offering of goods or services. Finally, there is no evidence that the Respondent is commonly known by the disputed domain name.

- The disputed domain name was registered and is being used in bad faith. The Respondent has used the disputed domain name to carry out a phishing attack on at least one of the Complainant’s customers. This fraudulent activity substantiates the Respondent’s bad faith in registering and using the disputed domain name. Clearly, the Respondent was aware of the existence of the Complainant’s JAKE’S FIREWORKS trademark prior to the registration of the disputed domain name. The Respondent has been using the domain name in an attempt, made for commercial gain, to attract Internet users by creating a likelihood of confusion with the Complainant’s JAKE’S FIREWORKS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The registration of a domain name in furtherance of phishing scams supports a finding of bad faith registration and use. Finally, the Respondent has engaged in a pattern of abusive registrations.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “jake’s fireworks”” is a term directly connected with the Complainant’s services as a notorious fireworks distributor in the United States.

Annex 4 to the Complaint shows a trademark registration for JAKE’S FIREWORKS obtained by the Complainant in 2014, referring first use in commerce in 1981.

The trademark JAKE’S FIREWORKS is encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark JAKE’S FIREWORKS merely by the removal of the “ ’ ” symbol and of the final letter “s”, as well as by the inclusion of the generic-Top-Level-Domain (“gTLD”) extension “.com”.

The confusingly similarity between the expressions JAKE’S FIREWORKS and JAKES FIREWORK is unquestionable and it is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant brought evidence that the disputed domain name has been used in connection with a phishing fraudulent scheme.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

Actually, the Respondent has not indicated any reason to justify why the specific term “jakesfirework” was chosen to compose the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Panel concludes that it is very unlikely that the Respondent was not aware of the Complainant’s trademarks and that the registration of the disputed domain name was a mere coincidence.

The Complainant has been using its trademark JAKE’S FIREWORKS in commerce since 1981. When the disputed domain name was registered by the Respondent – in May 2021 – the trademark JAKE’S FIREWORKS was directly connected to the Complainant’s activities as a fireworks reseller.

The disputed domain name encompasses the trademark JAKE’S FIREWORKS. The removal of the “ ‘ ” symbol and adoption of the term “firework” in the singular form do not reduce the risk of confusion in the present case. UDRP panels have decided that in the case of phishing attacks, small changes like these are often made to increase the chances of convincing the unsuspecting consumer of the brand to click on fraudulent links.

In this case, the Complainant showed that the Respondent used the disputed domain name to send at least one email message to a Complainant consumer, trying to impersonate the Complainant, in order to gain undue financial advantage.

Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances of this case, including:

(a) the Respondent not indicating any intention to use the disputed domain name;

(b) the Respondent not providing justifications for the registration of a domain name containing a third-party trademark in commerce for decades;

(c) the evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme, trying to impersonate the Complainant; and

(d) the lack of any plausible good faith reason for the adoption of the term “jakesfirework” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

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 disputed domain name <jakesfirework.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: October 18, 2021

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