Friv-2017.com

The timeline behind friv-2017.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Zyis Limited. v. DANG PHUC VIET Claim Number: FA2209002013577 PARTIES Complainant is Zyis Limited. (“Complainant”), United Kingdom. Respondent is DANG PHUC VIET (“Respondent”), Vietnam. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <friv-2017.com>, registered with Name.com, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. David H. Bernstein as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on September 27, 2022; Forum received payment on September 27, 2022. On September 27, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <friv-2017.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On September 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@friv-2017.com. Also on September 29, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on October 10, 2022. On October 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant alleges that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. Complainant states that it owns trademark registrations for FRIV in the European Union, the United States, and in numerous other countries through an International registration filed with WIPO through the Madrid Protocol, and that it has common law rights in that mark. Complainant alleges that it has consistently and continuously used its FRIV marks for online computer games. Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark because it incorporates the mark in which Complainant has trademark rights and adds only a hyphen and the number “2017” to the end. Complainant further alleges that Respondent has no rights or legitimate interests with respect to the disputed domain name. Complainant states that Respondent does not hold any trademarks for the term FRIV, was never previously known by the name FRIV, and does not have a license or any sort of permission from Complainant to use Complainant’s FRIV marks. Complainant additionally alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but instead is using the disputed domain name to divert internet users attempting to locate Complainant’s website to a website for the commercial benefit of Respondent. Finally, Complainant submits that the disputed domain name was registered and is being used by Respondent in bad faith. Complainant alleges that Respondent registered the domain name in 2016, ten years after Complainant had launched its own website and a year after Complainant had registered its word mark with the European Union and through WIPO. Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion with Complainant’s FRIV marks. Complainant further alleges that it can be reasonably inferred that Respondent knew of Complainant’s FRIV marks since Respondent’s website initially featured Complainant’s distinctive trade dress and logotype. B. Respondent Respondent contends that Complainant does not have a protectable trademark in FRIV. Respondent asserts that the word Friv is generic and has the same meaning as the word “games.” Respondent notes that there are approximately 5,000 domain names containing the word Friv, and contends that this indicates that the term is a “general keyword.” Finally, Respondent notes that its domain name was registered before Complainant registered its trademark in the United States. FINDINGS Complainant Zyis Limited, a UK limited liability company, owns and operates a website at friv.com, an online gaming website. Complainant registered this domain name on May 26, 2004. In March 2015 Complainant filed applications with the European Office for Harmonization in the Internal Market (“OHIM”) and the United States Patent and Trademark Office (“USPTO”) to register its word mark FRIV; Complainant also applied to register its FRIV design mark with the USPTO. OHIM registered the FRIV word mark in July 2015; the USPTO registered the word and design marks on May 30, 2017. Complainant extended its registration to numerous other countries through the Madrid Protocol, including Australia, China, India, Israel, Japan, Mexico, New Zealand, Turkey, Ukraine and Viet Nam; WIPO notified the extension of rights as of September 17, 2015. On February 14, 2016, Respondent DANG PHUC VIET of Viet Nam registered the domain name <friv-2017.com>. Respondent’s website offers online gaming. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant owns trademark registrations for FRIV. Those registrations prima facie satisfy the threshold requirement of having trademark rights for purposes of the first element of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The disputed domain name is confusingly similar to Complainant’s registered trademark. The disputed domain name adds a hyphen and the number “2017” to the end of Complainant’s mark. The addition of a number or year to the identifiable trademark does not prevent the disputed domain name from being seen as confusingly similar to Complainant’s trademark for purposes of the Policy. See generally WIPO Overview 3.0, section 1.8. Rights or Legitimate Interests Once a complainant makes a prima facie case that the respondent lacks a legitimate interest in the disputed domain name, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the complainant. WIPO Overview 3.0, section 2.1. In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has registered a domain name that is confusingly similar to Complainant’s mark and has used it to offer goods and services that directly compete with Complainant’s business. An infringing use is not a bona fide offering of goods or services. On AG, On Clouds GmbH v. Nguyen Luu et al., WIPO Case No. D2021-1714. There is no indication in the record that Respondent is commonly known by the name “friv-2017,” and neither the disputed domain name nor the website to which the disputed domain name resolves suggest any possible fair use of Complainant’s mark. In fact, the website initially featured a logo that appeared similar to Complainant’s logo, which supports an inference that Respondent was attempting to profit from confusion with Complainant’s mark. Respondent’s main defense is that FRIV is a generic term for games, and that Respondent therefore has the right to use this generic term in the domain name for his gaming website. Other than pointing to other domain names that also reference “FRIV,” though, Respondent offers no evidence to support that bald assertion. The existence of other domain names containing the word FRIV does not support Respondent’s claim that the term is generic, since those domain names may similarly be infringing on Complainant’s mark. In the absence of compelling evidence that the term FRIV has become a generic term for games and that Complainant’s trademark registrations should be cancelled, the Panel rejects Respondent’s defense. Electronic Commerce Media, Inc. v. Taos Mountain, Forum Case No. 95344 (Oct. 11, 2000). Following receipt of the registrar verification and information about the identity of Respondent, Complainant indicated that Respondent has registered ten additional domain names that include the FRIV mark. Although those domain names are not part of this proceeding, the fact that Respondent has registered so many domain names that incorporate Complainant’s trademark is further evidence of its lack of rights or legitimate interests. Cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. 2001-0903. Because Respondent has failed to rebut Complainant’s prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, the Panel finds that Complainant has carried its burden of proof as to the second element of the UDRP. Registration and Use in Bad Faith To satisfy the third element, a complainant must prove bad faith registration and use of the disputed domain name on the part of the respondent. The Policy’s non-exhaustive list of circumstances that can be evidence of the registration and use of a domain name in bad faith includes the following: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Respondent contends that his registration of “friv-2017” was not in bad faith because he registered the domain “friv-2017” in 2016, before Complainant’s marks were registered in the United States. That, however, is not the test. Rather, the question is whether Respondent registered the disputed domain name with knowledge (or implied knowledge) of Complainant’s trademark rights with the bad faith intent to profit from Complainant’s trademark rights. At the time Respondent registered the disputed domain name, Complainant had been using its mark for a decade. Moreover, at that time, the trademark was registered in numerous countries, including in Viet Nam, where Respondent is based. That the mark had not yet registered in the United States is irrelevant in light of these facts. (Furthermore, Complainant had already applied to register its mark in the United States, and its subsequently-issued registration has priority back to 2015.) Given that Respondent adopted the disputed domain name after Complainant’s mark already was in use and already was registered in some jurisdictions, the Panel reasonably can infer that Respondent’s intent was to unfairly capitalize on Complainant’s trademark rights. WIPO Overview 3.0, paragraphs 3.8.2. Moreover, Respondent’s website initially used a design and logo that looked very similar to Complainant’s mark, which not only shows that Respondent was aware of Complainant and its mark at the time Respondent adopted and began use of the disputed domain name, but also supports an inference that Respondent registered and used the disputed domain name with the specific intention of confusing Internet users. That is paradigmatic bad faith under the Policy. See generally WIPO Overview 3.0, paragraphs 3.2.1. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <friv-2017.com> domain name be TRANSFERRED from Respondent to Complainant. David H. Bernstein, Panelist Dated: October 25, 2022 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.