The Complainant is Gotham Products, Inc. of Hillburn, New York, United States of America, represented by Leason Ellis LLP, United States of America.
The Respondent is Blackstar Low Energy Diet of Graeagle, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 26, 2013, 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 confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on January 10, 2014. 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 an online retailer of indoor and hydroponic cultivation equipment, including light emitting diode (“LED”) lamps and lighting systems. The Complainant offers its LED lamps and lighting systems under the mark BLACKSTAR, which the Complainant registered with the United States Patent and Trademark Office (USPTO) on October 2, 2012. The Complainant asserts use of the BLACKSTAR mark in commerce since as early as June 2008.
The disputed domain name was registered on August 12, 2011. When the Complainant first became aware of the disputed domain name, it resolved to the website on which LED cultivating lamps were offered for sale (“www.”). The website featured a header prominently displaying the Complainant’s BLACKSTAR mark and logo. The disputed domain name registrant and administrative contact, according to a screen shot of the pertinent WhoIs information captured by the Complainant on August 14, 2012, was “Black Code DVD/C[…] Duerr”.
The Complainant sent a demand letter to Mr. Duerr on March 12, 2013. The following day the WhoIs registrant information for the disputed domain name was changed to “Buck Rogers”, at the same address now provided for the Respondent in the relevant WhoIs records. On March 14, 2013, the Complainant sent a second demand letter. On the same day, Mr. Duerr registered the domain name and moved the content from “www.” to “www.”.
On April 2, 2013, the Complainant sent a third demand letter to Mr. Duerr, following which the name of the registrant in the WhoIs records was changed to “Blackstar Low Energy Diet” (the Respondent herein). The administrative contact in the WhoIs records remained “Black Code DVD/C[…] Duerr”, however, and the physical address for the Respondent was unchanged from that previously provided for “Buck Rogers”. The disputed domain name currently resolves to a website concerning a purported diet plan identified as the “Blackstar LED (Low Energy Diet) System.” 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its BLACKSTAR mark, in which the Complainant asserts rights based on registration and use. The Complainant maintains that it had established common law rights in the mark well before to the registration of the disputed domain name. The Complainant presents evidence of unsolicited publicity for the Complainant’s BLACKSTAR goods in consumer forum posts in 2010 and 2011, as well as evidence of online advertising, brochures and catalogs. The Complainant asserts that the Respondent’s attempt at appropriating the Complainant’s goodwill through registering the disputed domain name is further evidence of secondary meaning for the BLACKSTAR mark.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the dispute domain name. The Complainant submits that while the Respondent may have purchased (and resold) the Complainant’s products, the Respondent is not affiliated with the Complainant and has not been authorized to use the Complainant’s BLACKSTAR mark. According to the Complainant, the Respondent is a competitor in the LED business and has used the disputed domain name to divert traffic to competitive business’ websites. The Complainant asserts that the Respondent’s has not made a bona fide offering of goods or services, but instead is intentionally trading on the goodwill and reputation of the Complainant, using the disputed domain name to mislead consumers into believing that the Respondent’s website is associated with or had the endorsement of the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent clearly was aware of the Complainant and its BLACKSTAR mark when registering the disputed domain name. According to the Complainant, the Respondent’s sole reason for registering the disputed domain name was to exploit and profit from the Complainant’s rights, by intentionally misleading consumers into believing that the Complainant was associated with or endorsed the Respondent’s website. Further, the Complainant submits that the Respondent’s bad faith is evidenced by the repeated change of registration information for the disputed domain name each time the Complainant demanded the transfer of the domain name. The Complainant asserts that the Respondent is merely an alias for the initial registrant of the disputed domain name, “C[…] Duerr”, and that the disputed domain name at all material times has been controlled by a single person or entity. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s BLACKSTAR mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the term “LED” in the Panel’s judgment not only does not dispel the resulting confusing similarity, but is likely to call to mind the Complainant and its BLACKSTAR products. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Although it is not necessary under the first element of the Policy for the Complainant to establish trademark rights predating the registration of the disputed domain name, this issue may become relevant in relation to the second and third elements of the Policy. The Panel has examined the record and concludes that the Complainant established common law rights in BLACKSTAR prior to the Respondent’s registration of the disputed domain name. Common law trademark rights may be shown by use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Given the evidence adduced by the Complainant as to the duration of the Complainant’s use of the mark, and evidence of advertising, promotion and unsolicited media attention, the Panel finds that BLACKSTAR had come to be recognized by the relevant purchasing public as an indicator of source for the Complainant’s products prior to the Respondent’s registration of the disputed domain name.
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The disputed domain name, however, incorporates the Complainant’s mark in its entirety, and seems calculated to call to mind the Complainant and its LED products. The Respondent moreover has used the disputed domain name to attract Internet users to a commercial website offering for sale such LED products.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel concludes that the disputed domain name at all material times has been under common control, most likely by a single person or entity, with no change in the beneficial ownership of the disputed domain name since its registration on August 12, 2011. In this Panel’s view, it is evident that the Respondent was aware of the Complainant and the Complainant’s BLACKSTAR products when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s BLACKSTAR mark through the creation of Internet user confusion, in order to divert traffic to the Respondent’s commercial website.
The Complainant maintains that the products offered for sale on the Respondent’s website were competing products. However, to the extent that the Respondent’s website might suggest the Respondent was reselling the Complainant’s products, the consensus view of UDRP panelists is that a reseller offering trademarked goods or services using a domain name containing the trademark may establish rights or legitimate interests in the domain name only where the following conditions are met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
See WIPO Overview 2.0, paragraph 2.3. The leading decision is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”).
Even a cursory review of the record reveals that the Respondent has failed to meet the Oki Data standards. It is critical to the establishment of rights or legitimate interests under Oki Data that the reseller takes steps to avoid using of the owner’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement. Considering the overall look and feel of the Respondent’s website, the prominent display of the Complainant’s BLACKSTAR logo and mark, and the absence of any disclaimer, Internet users could easily expect the disputed domain name to be linked to a website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel rejects as contrived the Respondent’s more recent claim to be using the disputed domain name in connection with a purported “low energy diet” known as “Blackstar LED”. Nor, in the circumstances of this case, can it be said that 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 that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In this Panel’s assessment, the Respondent without question was aware of the Complainant’s BLACKSTAR mark when registering the disputed domain name. The record is convincing that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319. Further, the Panel considers the Respondent’s conduct subsequent to being contacted by the Complainant as further evidence of bad faith.
Accordingly, the Panel finds that the 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 the Complainant.
William R. Towns
Sole Panelist
Date: January 24, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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