Complainant is B & H Foto & Electronics Corp. of New York, New York, United States of America.
Respondent is Joel Deutsch of Lauderhill, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 9, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 9, 2010, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant information for the Disputed Domain Name that differed from the named Respondent in the Complaint. Complainant filed an amended Complaint on December 14, 2010.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 18, 2011. 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 states that it is the owner of registrations or applications in more than 80 countries for trademarks that contain the characters “B & H” or “B & H PHOTO VIDEO PRO AUDIO,” including U.S. Reg. Nos. 2,229,004 for B & H (first used in commerce in July 1973 in connection with “retail store and catalog services featuring cameras and photographic accessories, video and audio equipment and accessories, computer accessories, electronic musical keyboards, and electronic goods”); 3,770,264 for B & H (first used in 1973 in connection with, inter alia, “printed product catalogs and informational resource catalogs in the fields of photography, audio and video equipment, post production equipment related thereto, and digital imaging equipment”); and 2,230,867 for B & H PHOTO VIDEO PRO AUDIO (first used in July 1973 in connection with “retail store and catalog services featuring cameras and photographic accessories, video and audio equipment and accessories, computer accessories, electronic musical keyboards, and electronic goods” (hereafter, the “B&H Trademarks”).
Complainant further states that it “has invested several million dollars over the years to publicize” the B&H Trademarks and its website using the domain name (which has been in operation since October 1996).
The Disputed Domain Name was registered on October 3, 2000, and is being used in connection with a website titled “Best and Hottest Photo Video” that contains advertisements for cameras and photographic accessories.1 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is confusingly similar to the B&H Trademarks because the Disputed Domain Name “simply replaced the ampersand” in the trademark with the word “and.”
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not authorized by Complainant to use the B&H Trademarks; Respondent is not commonly known by the Disputed Domain Name; and Respondent has chosen “a confusingly similar variation of the Complainant’s highly promoted and unmistakable mark to promote its Internet search and Web marketing services.”
The Disputed Domain Name was registered and is being used in bad faith because use of the Disputed Domain Name in connection with “a site that shows sponsored links to products competing with those of the [C]omplainant constitutes improper use of Complainant[‘]s trademark.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the B&H Trademarks, and Respondent does not dispute the validity of the B&H Trademarks.
As to whether the Disputed Domain Name is identical or confusingly similar to the B&H Trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “bandhphotovideo”), as it is well-established that the top-level domain name (i.e., “.com”) should typically be disregarded for this purpose.
This Panel agrees with Complainant’s arguments that use of the word “and” in lieu of an ampersand (“&”) in the Disputed Domain Name is irrelevant, given that domain names cannot contain such characters. See, e.g., AT&T Knowledge Venture II, L.P. v. Rnetworld,WIPO Case No. D2007-0035 (“the fact that Respondent has replaced the ampersand in AT&T’s mark with an ‘n’ does not eliminate the confusing similarity. As Complainant correctly points out on the Internet it is not possible to use the symbol ‘&’ in a domain name”); and PG&E Corporation v. Samuel Anderson and PGE in the year 2000,WIPO Case No. D2000-1264 (“[t]he elimination of the ampersand does not serve to distinguish the disputed domain names from Complainant’s mark”).
Further, the inclusion of the words “photovideo” in the Disputed Domain Name do nothing to eliminate any confusingly similarity. As this Panel very recently stated, the addition of certain words can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent is not authorized by Complainant to use the B&H Trademarks; Respondent is not commonly known by the Disputed Domain Name; and Respondent has chosen “a confusingly similar variation of the Complainant’s highly promoted and unmistakable mark to promote its Internet search and Web marketing services.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant does not specify which, if any, of the preceding factors exists with respect to the Disputed Domain Name. However, numerous previous panels under the Policy have found bad faith where, as here, a respondent is using a confusingly similar domain name in connection with a website that offers for sale goods similar to those covered by the applicable trademark, and the Panel agrees with the decision cited by Complainant finding that “a landing page showing sponsored links to products competing with those of the Complainant constitutes an improper use of Complainant's trademark and is evidence of the Respondent's bad faith registration.” Société Nationale des Chemins de Fer Français v. Miguel Casajuana,WIPO Case No. D2008-1593.
Further, the Panel notes that Respondent’s website using the Disputed Domain Name is titled “Best and Hottest Photo Video” – which arguably could be an acronym for “B&H Photo Video.” However, not only has Respondent failed to make this argument, but the Panel believes this title “can be viewed as nothing more than a transparent attempt to manufacture a basis for use of” the B&H Trademarks. Microsoft Corporation v. My Speedy Net Phone,WIPO Case No. D2003-0359.
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: February 1, 2011
1 The Panel takes note of the fact that more than 10 years have elapsed between the date on which the Disputed Domain Name was registered and the date on which the Complaint was filed, but the Panel does not address this issue because Respondent has not done so and, more importantly, as this Panel has previously stated, a “delay in filing [a] Complaint is interesting but irrelevant given that the Policy does not provide any defense of laches.” (Internal punctuation and citation omitted.)
Full & Egal Universal Law Academy