Flipboard, Inc. v Ankit Vyas, Ankit Vyas Ventures Private Limited

WIPO Case No. DTV2025-0001

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Flipboard, Inc. v. Ankit Vyas, ANKIT VYAS VENTURES PRIVATE LIMITED

Case No. DTV2025-0001

1. The Parties

The Complainant is Flipboard, Inc., United States of America, represented by Loeb & Loeb, LLP, United

States of America (“United States”).

The Respondent is Ankit Vyas, ANKIT VYAS VENTURES PRIVATE LIMITED, India.

2. The Domain Name and Registrar

The disputed domain name <flipboard.tv> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2025. On January 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2025, 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 (Unknown, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 16, 2025, 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 January 16, 2025.

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 January 17, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 6, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 7, 2025.

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The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 12, 2025. 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 United States company. The Complainant operates, since 2010, a “social magazine” platform that allows users to create and view content from various sources. The Complainant is the owner of several trademark registrations, including the following:

Registration Date of

Trademark Jurisdiction Class

No. Registration

Class 9, Class 41

FLIPBOARD	4179857	United States	July 24, 2012.	and Class 45.
August 27,
FLIPBOARD	4392605	United States	Class 35.
2013.
January 13,
FLIPBOARD	4671986	United States	Class 42.
2015.
Class 9,
Class 35,
December 11,	Class 41,
5629342	United States	2018.	Class 42 and Class

45.

Class 9,

November 18, Class 35

4640398 United States 2014. and Class
41.

January 20,

4675593 United States Class 42.

2015.

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The Complainant operates its official website which can be found at the domain name <flipboard.com>, registered on March 6, 2000, and operated by the Complainant since 2010.

The disputed domain name <flipboard.tv> was registered on May 9, 2023. It resolved to a website displaying the Complainant’s FLIPBOARD trademark, without any disclaimer as to the lack of association thereof with the Complainant. At the date of writing this Decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends the following:

I. Identical or Confusingly Similar

That the Complainant’s FLIPBOARD trademark has achieved incontestable status, and that therefore the
Complainant has the exclusive right to use said trademark.

That the disputed domain name was registered long after the Complainant’s first use and registration of its FLIPBOARD trademark, i.e., that the disputed domain name was registered on May 9, 2023, being that the Complainant has been rendering its services under its FLIPBOARD trademark since 2010.

That the Complainant sent two cease-and-desist letters to the Respondent, the first of which was sent through the Amazon Web Services Abuse Report platform, and the second of which was directly sent to the Respondent via the email address disclosed by the Amazon Web Services Abuse Report team. That none of these letters were answered by the Respondent.

That the disputed domain name incorporates the Complainant’s famous FLIPBOARD trademark in its
entirety and is confusingly similar to the Complainant’s domain name <flipboard.com>, and that the suffix
“.tv” does not constitute a differentiating element.

That, prior to the Respondent’s receipt of the Complainant’s cease-and-desist letters, the website to which the disputed domain name resolved displayed the Complainant’s FLIPBOARD trademark without authorization. That this unauthorized use confused and misled the public into believing that the disputed domain name was associated with the Complainant, despite the fact that no such association exists.

That the Respondent is not affiliated with the Complainant in any way, and that the Complainant has not licensed, endorsed, sponsored or authorized the Respondent to use the Complainant’s FLIPBOARD trademark or to register domain names related to said trademark.

That when a trademark is recognizable in a disputed domain name, it should be considered as confusingly
similar to the registered trademark (and cites DHL Operations B.V. v. DHL Packers, WIPO Case No.
D2008-1694; and Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case

No. D2016-2087)

II. Rights or Legitimate Interests

That the Respondent has no rights or legitimate interests in the disputed domain name; rather, that the that the Respondent and the Complainant are related in some way, which is not true.

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That the Respondent is not related to, affiliated with or connected with the Complainant in any way, and that considering that the Complainant has not licensed or authorized the Respondent to use its FLIPBOARD trademark or to register any domain name incorporating said trademark, the Respondent’s use of said mark cannot be contemplated as bona fide or legitimate (and cites Nokia Corp. v. Nokiagirls.com, WIPO Case No. D2000-0102; Institute for Foreign Study [U.K.] Ltd v. Arwut Rugsakhate, PhuketCreative.com, WIPO Case No. D2016-1076; and Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110).

That there is no evidence or reasonable inference that the Respondent is currently known or has been known as “Flipboard”. That the Complainant’s rights to the FLIPBOARD trademark date back to 2010, well before the registration of the disputed domain name, and that the Complainant is not aware of the Respondent’s use of the FLIPBOARD trademark prior to the Complainant’s dates of first use.

That the Respondent was put on notice of the Complainant’s rights and of the Respondent’s unauthorized use of the disputed domain name by means of two cease-and-desist letters. That the Respondent removed the “F Design mark” from the website to which the disputed domain name resolved, after the reception of the first cease-and-desist letter. That, after the reception of the second cease-and-desist letter, the Respondent took down the whole website. But that the Respondent still maintains the registration of the disputed domain name. That the Respondent did not provide any information or evidence asserting any rights or legitimate interests in the disputed domain name, which effectively constitutes an admission that the Respondent does not have any rights or legitimate interests.

III. Registered and Used in Bad Faith

That the disputed domain name has been used for illegal or malicious purposes by exploiting the Complainant’s FLIPBOARD trademark to lure unsuspecting customers to the disputed domain name. That the website to which the disputed domain name resolved not only used the “Flipboard” name but also used one of the Complainant’s FLIPBOARD design trademarks to confuse the public into believing that said website was connected to the Complainant’s business.

That the Respondent is using the disputed domain name in bad faith because the Respondent does not have any right to use the Complainant’s FLIPBOARD trademark. That the Complainant’s FLIPBOARD trademark does not correspond to a commonly used term, which shows, by using the disputed domain name, the Respondent has deliberately sought to appropriate the Complainant’s customers and name. That

the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known
trademark by an unaffiliated entity can create a presumption of bad faith (and cites Panavision Intern., L.P. v.
Toeppen. 945 F. Supp. 1296 [C.D. Cal. 1996]; The Channel Tunnel Group Ltd. v. John Powell, WIPO
Case No. D2000-0038; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document
Technologies Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 and WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section

3.1.4.).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to successfully request remedies:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark to which
the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in connection to the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

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Given the Respondent’s default and therefore, failure to specifically address the case merits as they relate to
the three UDRP elements, the Panel may decide this proceeding based on the Complainant’s undisputed
factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC
v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292; Encyclopaedia
Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; see also

WIPO Overview 3.0, section 4.3).

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the FLIPBOARD trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The disputed domain name entirely comprises the Complainant’s FLIPBOARD trademark. The Panel finds under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

that the Complainant’s FLIPBOARD trademark is recognizable within the disputed domain name.
WIPO Overview 3.0, section 1.7. It is also well established that the addition of a country-code Top-Level

Accordingly, the disputed domain name is identical to the Complainant’s FLIPBOARD trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Specifically, the Respondent has failed to submit evidence of bona fide or legitimate noncommercial or fair use of the disputed domain name. No evidence was provided either in connection with the Respondent being commonly known by the disputed domain name.

Panels have held that the use of a domain name for illegal activity such as impersonation or passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. In the present case the Panel notes that the Respondent’s conduct consisting of displaying the Complainant’s trademark FLIPBOARD on the website to which the disputed domain name resolved, constitutes impersonation.

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Furthermore, the Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

Therefore, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Complainant has ascertained its rights over its FLIPBOARD trademark. The dates of registration of said trademark significantly precede the date of registration of the disputed domain name.

In the present case, the Panel notes that the Respondent has intentionally used the disputed domain name
to attract, for commercial gain, Internet users to the website to which the disputed domain name resolved, by
creating the impression among Internet users that it was related to, associated with, or endorsed by the
Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of
the WIPO Overview 3.0; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. /
Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365 and Jupiter Investment Management
Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260).

Previous Panels have held that the use of a domain name for illegal activity, in this case, impersonation and or passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4.

At the date of writing of this Decision, the disputed domain name does not resolve to an active website. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds that the current non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing his identity or use of false contact details (noted to be in breach of his registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that under the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has successfully established the third element 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 <flipboard.tv> be transferred to the Complainant.

/Kiyoshi Tsuru/
Kiyoshi Tsuru
Sole Panelist
Date: February 26, 2025

August 20,

4389688 United States Class 35.

2013.

Class 9, Class 41

4184444 United States July 31, 2012. and Class