WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phantom Fireworks Showrooms, LLC / Phantom I.P., LLC v. Frank Elliott / Jurassic Fireworks, Seasonal Sales Inc.
Case No. D2021-4104
1. The Parties
The Complainant is Phantom Fireworks Showrooms, LLC / Phantom I.P., LLC, United States of America (“United States”), represented by Patton & Davison LLC, United States.
The Respondent is Frank Elliott / Jurassic Fireworks, Seasonal Sales Inc., United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <phantomfireworksscams.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing 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 the Complainant on December 12, 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 amendment to the Complaint on December 13, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Response was filed with the Center on January 9, 2022.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 17, 2022. 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 Phantom Fireworks Showrooms, LLC is a limited liability company established under the law of the State of Delaware, United States and headquartered in Youngstown, Ohio, United States. It retails fireworks nationwide under the PHANTOM FIREWORKS brand through its own storefronts, other retail establishments, and online store at “www.fireworks.com” (the Complainant’s website). Other domain names owned by the Complainant, including <phantomfireworks.com>, redirect to the Complainant’s website. The Complainant also sells clothing and accessories branded with the PHANTOM FIREWORKS mark. The Complainant’s website traces a history over 40 years and claims “retail stores and showrooms in 15 states as well as over 1,500 temporary sales venues in 17 states”.
The Complainant Phantom I.P., LLC is a Delaware limited liability company that holds United States Trademark Registration Number 3285426 (registered August 28, 2007) for PHANTOM FIREWORKS as a standard character mark and Registration Number 3267645 (registered July 24, 2007) for a design mark prominently featuring the words PHANTOM FIREWORKS.
The Complaint is not clear on this point, but the Panel infers that the Complainant Phantom I.P., LLC licenses the trademarks to the Complainant Phantom Fireworks Showrooms, LLC for use in its business. The PHANTOM FIREWORKS mark appears repeatedly on the Complainant’s website, accompanied with the ® symbol giving notice of trademark registration. Therefore, both entities are referred to collectively as the “Complainant” hereafter in this Decision.
The Registrar reports that the Domain Name was registered on October 8, 2020, by the Respondent Frank Elliott, listing no organization and a postal address in Denver, Colorado, United States.
The Complainant initially named as Respondent Mr. Elliott’s company, Seasonal Sales Inc., a Colorado corporation formed in June 2020, with the registered trade name “Jurassic Fireworks”. The Complainant amended the Complaint to add Mr. Elliott as a Respondent following the Registrar’s verification response. The Response was submitted only in the name of Frank Elliott. He is evidently the principal and registered agent of Seasonal Sales Inc., which operates a website advertising fireworks sales (chiefly in Denver, Colorado and Cheyenne, Wyoming) at “www.jurassicfireworks.com”.
The Domain Name resolves to a criticism site (the “Respondent’s website”), headed “PHANTOM FIREWORKS SCAMS”, followed by the tagline “Free Should Mean Free”. The website details instances of alleged deceptive advertising in the Complainant’s promotions and encourages site visitors to sign a petition and contact a consumer protection agency. The site includes recordings of conversations between Mr. Elliott and sales personnel at the Complainant’s retail outlets. The Respondent Mr. Elliott acknowledges that he is responsible for the site, employing it for “fair use criticism” to reveal the Complainant’s “scandalous tactics to take advantage of their customers”. The Respondent’s website does not disclose the website operator or include a link to the Jurassic Fireworks website. There is no advertising on the Respondent’s website for goods or services offered by the Respondent or any third party.
Only Mr. Elliott has responded to the Complaint, and he is the Domain Name registrant. Jurassic Fireworks is a trade name, not a legal entity. There is no evident involvement by Seasonal Sales Inc. in the Domain Name registration or in the associated website. Therefore, the Panel refers hereafter to Mr. Elliott as the “Respondent”.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to its registered PHANTOM FIREWORKS trademark. The Complainant objects that the Respondent has no permission to use the mark and has no other rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent is a competitor that seeks to tarnish the Competitor’s reputation, disrupt its business, and divert sales to the Respondent for commercial gain.
“The Website further promotes lies and misstatements about Complainant’s pricing, including unauthorized recordings of telephone conversations with Complainant’s employees, encourages visitors of the website to file Consumer Protection Agency complaints against Complainant, and contains a petition for those who were allegedly ‘victims of Phantom Fireworks scams’ to join a hypothetical class action law suit with no basis in law or fact. […] Respondent promotes the domain name www.phantomfireworksscams.com on banners near Complainant’s retail location and showroom in Cheyenne, Wyoming. Respondent further promotes the domain name by yelling and speaking through blowhorns while in close proximity to both Complainant’s customers and showroom. Respondent’s use of the domain name serves no purpose other than to harass Complainant.”
The Respondent argues that he has “fair use” rights to criticize and comment on the Complainant’s deceptive practices, as indicated by the word “scams” in the Domain Name. He argues that the Respondent’s website was registered and used in good faith for this purpose and has not been used to divert consumers for commercial gain. The Respondent observes that he is allowed to record conversations under Wyoming law, where the conversations took place that he posted on the website. The Respondent also reports that he offered to take down the Respondent’s website “if Phantom Fireworks would change their marketing to be in line with the industry standard and stop the use of gimmicks, trick marketing, and scandalous advertisement.”
The Respondent suggests that the Panel should find that the Complainant represents an attempt at Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a 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 a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for PHANTOM FIREWORKS as a word mark and as the dominant textual element of a design mark, and the Domain Name incorporates this mark in its entirety. As usual, the generic Top-Level Domain (“gTLD”) “.com” in the Domain Name string is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent claims a legitimate noncommercial or fair use of the Domain Name to refer to the Complainant and criticize its advertising practices. Because the Respondent is unquestionably a competitor, the issue is whether this is a genuine and noncommercial fair use or a pretext for gaining commercial advantage.
The WIPO Overview 3.0, section 2.6, reviews decisions identifying factors relevant to this assessment. The Domain Name comprises the trademark plus a derogatory term (“scams”) prima facie signaling that it is likely not associated with the Complainant itself. The Domain Name is not currently used as a pretext for advertising the Respondent’s products, which are not mentioned or linked, or the goods and services of other parties, as in classic cybersquatting. The Respondent’s website is clearly critical of the Complainant and not designed to misleadingly emulate the Complainant’s website. The Complainant makes conclusory statements to the effect that the Respondent’s allegations are “lies and misstatements” but does not actually dispute the authenticity of the advertisements, prices, and voice recordings published on the Respondent’s website.
The Complainant alleges that the Respondent’s website “tarnishes” the Complainant’s mark. UDRP and trademark decisions treat tarnishment as a kind of trademark dilution, diminishing the value of a mark by false and negative association. See, also , Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (United States Supreme Court 2003). Tarnishment in the UDRP context refers to “such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark”; by contrast, “fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting.” Titan Enterprises (Qid) Ply Ltd v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062 (Titan Enterprises), citing Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. As the panel concluded in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, “[t]he Policy is designed to prevent abusive cybersquatting, but ... it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.” There, as in the present case, all parties were located in the United States, where the concept of tarnishment does not apply to legitimate critical fair and noncommercial use of a trademark: “under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a ‘[n]oncommercial use of a mark’ which is the case if the site is a legitimate gripe site.”
As in Titan Enterprises, there is no evidence here that the Respondent, a competitor, has attempted to pass itself off as the Complainant or misleadingly divert Internet users of the Complainant. Nor is this a case where the Respondent has merely harassed the Complainant with vague and unsupported allegations and innuendo. Cf. The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823. The Respondent’s substantive criticisms are detailed on the website associated with the Domain Name, with supporting evidence in various forms. Those claims may be disputed, of course, in an appropriate forum; the UDRP proceeding does not lend itself to an adjudication of underlying libel, fraud, or consumer protection controversies. The core issue before this Panel is whether the Respondent is engaged in cybersquatting activity, and the Panel finds on this record that it does not.
The Panel concludes that the Complaint therefore fails on the second element.
C. Registered and Used in Bad Faith
While it is true as the Complainant points out, the Respondent’s intent in part here seems to be to disrupt the business of a competitor (a suggestion borne out by the Complainant’s claim of the Respondent “yelling and speaking through blowhorns while in close proximity to both Complainant’s customers and showroom”), and while the Respondent arguably plays both sides of the competition and criticism coin – and in the Panel’s view therefore flirts with crossing a line here, there is a prevailing intersection of this intent with competition and fair use issues better addressed with a fuller evidentiary record in court.
Given the Panel’s conclusion that the Respondent prevails on the second element, it is not necessary to make findings on the third element, bad faith, although the finding of legitimate interests logically impels a conclusion that the Respondent was not acting in bad faith, by – according to the limited record put before the Panel – its having registered and used the Domain Name exclusively for a genuine noncommercial criticism site which does not contain links to the Respondent’s competing site.
To the extent the Respondent would later change its site content to reflect a (pretextual) commercial intent to divert users to its own competing commercial site, different considerations may apply (whether in a UDRP or court proceeding).
For the foregoing reasons, the Complaint is denied.
8. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
“Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH.” WIPO Overview 3.0, section 4.16. Here, the parties are direct competitors, and there is evidently a history of aggressive competition at adjacent retail locations as well as online. The UDRP decisions on fair use and “gripe sites” are complex and driven by the specific facts in individual cases. The Complaint in this case should have addressed the issue in briefing the second element, but it cannot be said that this is a case where the facts clearly militated against success from the outset.
Accordingly, the Panel declines in this case to enter a finding of Reverse Domain Name Hijacking.
W. Scott Blackmer
Date: January 31, 2022
1 The Panel is aware that the Parties are competitors, but by all appearances, this is not attempt at a bait and switch or outright unfair competition; rather it would appear to be a subtle, if overtly critical, form of comparative advertising – noting that while there are no links to the Respondent’s site at the Domain Name, the Parties have physical locations near each other and therefore a commercial impact (albeit one that requires certain inferences or – more to the point, offline context) is clearly desired from the Respondent’s perspective.