Complainant is Line-X LLC of Huntsville, Alabama, United States of America (“United States”), represented by Symbus Law Group, LLC, United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Jason Nelson of Fife, Washington, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainant on June 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant did not file an amended Complaint.
The Center verified that 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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 16, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 24, 2018. 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 is the franchisor of Line-X brand spray-on truck bedliners and the registered owner of a number of LINE-X trademarks in several jurisdictions, including (for example) the United States, China, and the European Union. Complainant first registered LINE-X in the United States on November 8, 1994, (Registration No. 1861562) and has used the mark for its spray-on products and services for more than 20 years. Complainant offers it services on its website “.”
Respondent registered the disputed domain name on February 14, 2018. The disputed domain name previously redirected Internet users to a website, “”, purporting to be a forum and resource for Complainant’s franchisees. Visitors to the site encountered the following messages:
The site was purportedly “ran [sic] and operated by franchisees” and enabled franchisees to work together to (among other things) develop fair franchise agreements, be heard on corporate acquisitions, and have a voice on products and pricing. Users had to register by providing their name, email address, and franchise store number to access the “protected” “franchisees only” sections of the site. Complainant submitted no information about the content of the restricted “franchisee only” pages. At the time of this decision, the disputed domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant’s LINE-X mark as it incorporates the mark. Complainant contends that the addition of the descriptive term “owners group” deceptively implies that the site belongs to Complainant or is devoted to information about LINE-X franchise owners. According to Complainant, there is no indication that Respondent is making a bona fide use of the disputed domain name and Respondent’s use of LINE-X on its website shows that Respondent is seeking to trade off on Complainant’s rights. In Complainant’s view, Respondent cannot be a franchisee of Complainant because Complainant’s franchise agreements prohibit franchisees from establishing a website using any domain name containing LINE-X without Complainant’s prior written consent. Complainant also points to the lack of information on Respondent’s website about “who owns, sponsors, or otherwise is associated with the website and domain name” as indicative of its illegitimate nature. The ultimate conclusion, according to Complainant, is that Respondent is a cybersquatter who registered and is attempting to use the disputed domain name to undermine Complainant’s business or to profit at the expense of Complainant’s rights. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the LINE-X trademark in which Complainant has rights. Neither the exclusion of the hyphen nor the inclusion of the descriptive term “owners group” avoids the confusing similarity. As noted by previous UDRP panels, where the relevant trademark is recognizable within the disputed domain name, the addition of such terms would not avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). section 1.8.
Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The website to which the disputed domain name resolves purports to be “ran [sic] and operated by [LINE-X] franchisees” and, on its face, there is no indication that it is anything other than a forum created by one or more LINE-X franchisees for the collective benefit of the LINE-X franchise owners group. Without an indication to the contrary, the Panel assumes that Respondent’s website is what it purports to be.
A collection of franchissee’s could credibly assert nominative fair use rights to defend a website promoting their collective interests, but, for two reasons, this defense is not available here.
First, the franchise agreement here provides that “[y]ou must not establish a website on the Internet using any domain name containing the words ‘LINE-X’ or any variation without our prior written consent”. As UDRP panels have held in the analogous reseller context, the respondent’s use cannot be considered bona fide where doing so contravenes an agreement not to include the mark in a domain name. See WIPO Overview 3.0 section 2.8 (“The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”).
Second, Respondent’s use of the term “owners” in the disputed domain name and on the associated webpages offends the analogous Oki Data requirement that “the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site...”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The website here is ambiguously open to the interpretation that the LINE-X owner (i.e., Complainant) is sponsoring a group of strong franchisees. The sentence “our mission is to develop a strong group of Franchisees working together to grow our brand” (emphasis added) reflects the same ambiguity. A reasonable Internet visitor might well receive the impression that the trademark owner (rather than a franchisee) sponsored the website.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In view of the franchise agreement’s prohibition “establish[ing] a website” that contains the LINE-X mark, and Respondent’s ambiguous implication that the mark owner sponsored the website, the Panel finds that Respondent’s registered and used the domain name in in bad faith. See Thrifty Rent-A-Car System, LLC v. Thrifty Morocco, Thrifty Maroc / Connection Car S.A.R.L.,WIPO Case No. D2017-2061 (concluding that the registration of the disputed domain name in “contrast to and in breach of the License Agreement”, which prohibited the respondent from registering any domain name with the THRIFTY mark, was in bad faith); Damon’s Restaurants, Inc. v. JBR Enterprises, Inc.,WIPO Case No. D2007-1603 (noting that “[t]he Panel might be able to find bad faith at the time of registration if the applicable franchise agreement expressly prohibited the franchisee from incorporating one of Complainant’s marks into a domain name, or restricted uses of Complainant’s marks more generally”); Herbalife International of America, Inc. v. ,WIPO Case No. D2002-0101 (“Bad faith registration is shown here by the registration of a domain name in contravention of an undisputed agreement between the parties”); compare with Celebrity Signatures International, Inc. v. Hera’s Incorporated Isis Linder,WIPO Case No. D2002-0936 (finding “no violation of a contract or published guidelines to support a finding of bad faith” where the respondent registered the disputed domain name in the absence of a contractual prohibition on registration).
In the circumstances of the present case, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: August 7, 2018
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