The Complainant is Antsy Labs LLC of Dacono, Colorado, United States of America (“United States”), represented by Polsinelli PC, United States.
The Respondent is Contact Privacy Inc. Customer 0146656011 of Toronto, Canada / Jonathan Ng, Fidget Cube of Singapore, Singapore, represented by Andrey Parkhomenko, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2018. On April 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2018, 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 April 12, 2018 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 April 12, 2018.
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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. On May 1, 2018, the Respondent requested an automatic four-day extension of the due date for the Response. On the same day, the Center notified the Parties that the new due date for Response was May 10, 2018. The Response was filed with the Center on May 10, 2018.
On May 10, 2018, the Center received an unsolicited Supplemental Filing from the Complainant. On May 14, 2018, the Center received an unsolicited Supplemental Filing from the Respondent.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 22, 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
The Complainant was established by two brothers in the United States in 2015.
On August 20, 2016, it launched a Kickstarter campaign for its new product, a toy which it called the Fidget Cube. As its name suggests, the toy is a cube. The toy features various buttons, rollers or rockers on different faces for the user to press, squeeze or roll. As it says on the Complainant’s website, “Fidget at work, in class and at home in style. Fidget Cube has six sides with each side featuring something to fidget with: Flip, Glide, Click, Spin, Roll, Breathe.”
The goal for the Kickstarter campaign was USD 15,000. The campaign closed on October 19, 2016. It raised USD 6,465,690. There were 154,926 backers. Overall, the campaign is the ninth or tenth most funded project in the history of Kickstarter. There appears to have been significant press coverage of the toy, including in Forbes and on Techcrunch. According to the Complaint, the Complainant has shipped its Fidget Cube toys to customers in at least 29 countries.
On August 31, 2016, the Complainant filed an application to register FIDGET CUBE as a trademark with the United States Patent and Trademarks Office for stress relief toys in International Class 28. The application is still pending. The trademark examiner has objected to the application on the basis that the mark is descriptive, although registration in the Supplemental Register has been offered.
The Respondent, Mr. Ng, registered the disputed domain name on December 2, 2016. The Respondent offers for sale from the related website toys which appear to be the same design as the Complainant’s products. The Complainant claims they are counterfeit. The Respondent does not dispute that the products are not sourced from the Complainant.
At least initially (until objections were raised by the Complainant), the website to which the disputed domain name resolved featured images and text which had been copied from the Complainant’s website or Kickstarter page. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
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. Admissibility of Complainant’s Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
In the present case, the Complainant’s supplemental filing seeks amongst other things to correct at least some assertions about the status of a registration in the Supplemental Register in the United States. The Panel therefore admits it into the record. The Respondent’s supplemental filing in turn seeks to correct what it says are misrepresentations of its position in the Complainant’s supplemental filing. In the interests of completeness, the Panel will include it in the record too. B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant’s pending trademark application does not by itself satisfy the requirement of trademark rights under the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4.
The Complainant asserts, however, that its use of Fidget Cube has given it rights at common law, at least in the United States. The Respondent disputes this, contending that the term is descriptive. In addition to the position taken by the trademark examiner in the United States, the Respondent points also to the existence of a domain name registration for and the fact that a search on Alibaba reports over 5,501 results for “Fidget Cube”. The term “Fidget Cube” plainly has a high degree of descriptiveness about it.
The WhoIs record for shows that it was first registered on October 6, 2016. That is after the Complainant launched its Kickstarter campaign and had applied to register its trademark.
The domain name resolves to a website which promotes the “Squidget”, a toy which looks similar to the Complainant’s toy in many respects. The toy is not described in the text on the website as a “fidget cube”; it is just a “cube” or a “Squidget”. The website also says the company behind the “Squidget” was founded in 2009. The company also appears to have run a campaign on Indiegogo which, amongst other things, explains it was “last in the market” with its offering because it was securing its patent protection. There is no clear information available about when the Squidget product was available or in what volumes.
The 5,501 “results” on Alibaba are suggestive of a very much wider scale of use of “Fidget Cube”. As the Complainant points out, such search result numbers are very unreliable. Annex 2 to the Response, however, does show at least four vendors offering “fidget cubes”. One of those, while described as a fidget cube, is more properly a dodecahedron. The other three “fidget cubes” look remarkably similar to the Complainant’s product, although they have different “brand” names – “ZXZ Fidget Cube”, “Magic Fidget Cube” and “Vitoki 10styles Fidget Cube”. There is a suggestion in a Polygon article reporting delays in shipping of the Complainant’s toy to fulfil the Kickstarter orders, that the market is being “flooded” with products which the Complainant had rejected for quality reasons. The Complainant has not confirmed that speculation.
In his supplemental filing, the Respondent points out the need for concrete evidence to support a claim to secondary meaning emphasised in WIPO Overview 3.0, section 1.3. There are certainly aspects of the Complaint and the Complainant’s supplemental filing which do not meet those criteria. As noted above, however, the Complainant does report initial sales of over USD 6 million to over 150,000 purchasers and provides some examples of some widely read online publications reporting on the Complainant’s product.
Moreover, the Panel notes the timing of the registration of the disputed domain name; only a few months after the Complainant’s launch of its Kickstarter campaign. In that type of context, panels have often found that media coverage or even media announcements are sufficient to generate rights which confer standing under the Policy. See, e.g., Intermountain Health Care, Inc., IHC Health Services, Inc. v. Randy Delcore,WIPO Case No. D2017-0265, Mr. Olufela Olufemi Anikulapo Kuti v. Domain Administrator, NameFind LLC,WIPO Case No. D2016-0575, and Pacific-10 Conference v. Kevin Lee,WIPO Case No. D2011-0200.
Accordingly, the Panel finds that the Complainant has demonstrated sufficient rights at common law in “Fidget Cube” to have standing under the Policy.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: see WIPO Overview 3.0, section 1.7. In making this comparison, it is permissible to disregard the country code Top-Level Domain (“ccTLD”) included in the domain name as a functional requirement of the domain name system. Further, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ccTLD, “.co”, the disputed domain name differs from the Complainant’s trademark only by the addition of the definite article “the”. The Complainant’s trademark is clearly recognisable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. C. 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 may 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. UDRP panels have recognised 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 usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent is not affiliated with it and it has not given the Respondent permission to use or register the disputed domain name. The disputed domain name is not derived from the Respondent’s name. The Complainant further contends that the products being offered for sale by the Respondent are “counterfeit”.
The Respondent does not dispute that his products are not sourced from the Complainant or the other matters alleged by the Complainant above. Instead, the Respondent invokes the descriptive nature of the term “Fidget Cube” and contends that its products and its use of the disputed domain name do not infringe any intellectual property rights of the Complainant.
Having found that the Complainant does have rights in “Fidget Cube” under the Policy, however, it is well established that the use of a confusingly similar domain name to offer for sale goods in competition with the trademark owner is not an offering of goods or services in good faith under the Policy. It is also apparent from the Respondent’s website that he offers his products for sale in United States currency. It appears to be the default setting.
Accordingly, the Panel finds that the Complainant has established this requirement under the Policy. D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent does not clearly explain how he came to adopt the disputed domain name. Instead, he incorrectly claims he registered the disputed domain name only little more than one month after the Complainant filed its trademark application. The Response also appears to suggest (but does not positively assert) that he may have derived the name from the domain name, which was registered on October 6, 2016. However, he incorrectly claims that was registered before the Complainant’s Kickstarter campaign started. In fact, it was registered only thirteen days before the Kickstarter campaign concluded.
Moreover, when the Respondent launched his website, it contained images and text copied from the Complainant’s website or Kickstarter campaign. Nowhere does the Respondent explain how that came about or how and when he first learned about the Complainant’s product.
Bearing in mind the copying of the initial content of the Respondent’s website from the Complainant’s website or Kickstarter campaign and the absence of an explanation for that, it appears likely that the Respondent was in fact aware of the Complainant and its product when registering the disputed domain name.
The registration and use of the disputed domain name to offer for sale goods in competition with the Complainant, without rights or legitimate interest in the disputed domain name, constitutes bad faith under the Policy.
Accordingly, the Complainant has established the third requirement under the Policy. 6. 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 the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: June 6, 2018
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