WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com / Adam Grunwerg
Case No. D2021-3279
1. The Parties
The Complainant is Captain Fin Co. LLC, United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, United States.
The Respondent is Private Registration, NameBrightPrivacy.com, United States / Adam Grunwerg, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <captainfincompany.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 7, 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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2021.
The Center appointed John Swinson as the sole panelist in this matter on November 15, 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 a company from the United States that is a manufacturer, designer, and seller of surfing apparel, surfing fins, bags, and surfing accessories. The Complainant is well known for its surfboard fins.
The Complainant owns trademark registrations for CAPTAIN FIN CO. in the United States and other countries. For example, the Complainant owns United States Trademark Registration No. 4348962 that has a registration date of June 11, 2013.
The Complainant states that it has been using the CAPTAIN FIN CO. trademark since 2010.
The Complainant registered the disputed domain name in April 2007. At one time, the Complainant directed the disputed domain name to its website at “www.captainfin.com”. In April 2021, the Complainant accidently let lapse the registration of the disputed domain name.
The Respondent, apparently one Adam Grunwerg, is a partner of Finixio Ltd, and also a partner of PSY Ventures. According to the Registrar’s records, the Respondent has a Finixio email address.
Respondent registered the disputed domain name in about May 2021.
At one time, the Respondent used the disputed domain name for a website promoting products of competitors of the Complainant.
At the date of this decision, the disputed domain name diverts to the gay pornography section of the Pornhub website.
5. Parties’ Contentions
In summary, the Complainant makes the following submissions:
The Complainant owns a number of trademark registrations for CAPTAIN FIN CO., including in the United States, the European Union, and Australia.
The disputed domain name was originally registered by the Complainant. The Complainant unintentionally failed to timely renew the disputed domain name registration. Accordingly, the registration of the disputed domain name expired and was dropped in due course. Upon information and belief, the Respondent acquired and registered the disputed domain name on or about May 2021.
The disputed domain name fully incorporated the CAPTAIN FIN CO. trademark.
The Respondent is using the disputed domain name and website to advertise and promote surfing clothes and apparels offered by competitors of the Complainant.
It is reasonable to infer that the Respondent must have known of the CAPTAIN FIN CO. trademark.
The Respondent’s use of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant as to the content of the website. Therefore, the Respondent has no right or legitimate interest in respect of the disputed domain name as it has used a domain name which is identical to the Complainant’s trademark and which is likely to make a misrepresentation to Internet users that any associated website is connected with the Complainant.
The Respondent’s use is not a legitimate fair use because the Respondent is using the disputed domain name to promote the clothing and apparel of the Complainant’s competitors. In the Respondent’s website, it advertised and promoted clothing and apparel by industry competitors such as Billabong, Quiksilver, Roxy, RipCurl, and other leading surfing lifestyle brands.
The Respondent was neither an authorized trademark user of the Complainant nor a licensee of the Complainant when it registered the disputed domain name on or about May 2021.
The Panel should find that the Respondent has no rights or legitimate interests in the disputed domain name, and is not making a legitimate commercial or fair use of the disputed domain name.
The Respondent was aware of the Complainant’s rights at the time the disputed domain name was registered. The Respondent has created and registered in bad faith a confusingly similar domain name on or about May 2021, and continues to use the Complainant’s trademarks including on its website to advertise and promote surfing clothing and apparel offered by the Complainant’s competitors. Such registration and use of the disputed domain name abuses the Complainant’s CAPTAIN FIN CO. trademark by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent did not reply formally to the Complainant’s contentions.
Prior to the proceedings formally commencing, the Complainant forwarded to the Center an email communication on October 8, 2021 from the SEO Manager of Finixio Limited, that states:
“Hello. Please make a sensible offer on the domain. I'm not wasting my time with the WIPO complaint, and I have no sympathy for your client who made a mistake, and is now blaming us because he wants his domain back.
We haven't decided what we're going to do with the domain yet, maybe it's best if your client makes an offer and stops messing us around before we do.”
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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.
The onus of proving these elements is on the Complainant, even where the Respondent does not file a formal response.
An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman, WIPO Case No. DIO2020-0007.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
As stated above in Section 4, the Complainant owns registered trademarks for CAPTAIN FIN CO.
The disputed domain name includes the Complainant’s trademark CAPTAIN FIN CO. in its entirety. The only difference is that “co” is replaced by “company”. This change does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s CAPTAIN FIN CO. trademark under the Policy.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371.
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s CAPTAIN FIN CO trademark.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Complainant has not authorized or licensed the Respondent to use the Complainant’s trademark.
Further, the Complainant asserts that the Respondent made a commercial use of the disputed domain name by promoting products that compete with the Complainant’s products. The Complainant asserts that such use is not bona fide, but rather, it is use that misleads consumers into believing that the disputed domain name is associated with the Complainant.
As discussed below, the Respondent registered the disputed domain name after it accidentally lapsed, and then used it to attract Internet traffic to promote products competing with the Complainant. This is not bona fide use of the disputed domain name.
Additionally, the Respondent’s current use of the disputed domain name to divert traffic to a pornography website does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the disputed domain name. See:Tipico Co. Ltd. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2020-0446; G Y J Espa a Ediciones S.L. en C. v. Chesterton Holdings, WIPO Case No. D2007-1100; National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. D2001-1185; and contrast NP Factory Werbeagentur GmbH and Nastroje P. GmbH & Co. KG v. Demurrelt Enterprises Limited, WIPO Case No. D2007-1858.
The Complainant has prior rights in the CAPTAIN FIN CO. trademark, which precede the registration of the disputed domain name by the Respondent.
The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.
For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
In the present circumstances, the fact that the disputed domain name initially resolved to a website which advertised products in competition to the Complainant’s products, and then after notification of this dispute, now sends Internet traffic to a pornography website, leads the Panel to conclude that the registration and use of the disputed domain name are in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering the disputed domain name after the Complainant failed to renew it, and then by using the disputed domain name to market goods in competition with the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant. L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962; Budget Rent A Car System, Inc v. Admin, Domain, WIPO Case No. D2010-0149; and Cancer Support Community, Inc. v. Jacob Kovacs, WIPO Case No. D2021-3024.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.
The disputed domain name now resolves to a pornography website, which will likely disrupt the Complainant’s business and may potentially tarnish its trademark. The redirection appears to have been put in place after the Respondent was notified of the dispute, with the likely aim of putting pressure on the Complainant to reach a settlement with the Respondent. This is also indicia of bad faith. See, for example, Donvand Limited trading as Gullivers Travel Associates v. Omniscience, WIPO Case No. D2002-0746.
The Panel notes that the Respondent was an unsuccessful respondent in another UDRP proceeding. The Panel does not need to take this prior conduct into account in reaching this decision.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
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 <captainfincompany.com> be transferred to the Complainant.
Date: November 29, 2021