The Complainant is B&H Foto & Electronics Corp. ("B&H") of New York, New York, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Avi Lang of New York, Fra Rockaway, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Go Australia Domains, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 30, 2016, 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 March 31, 2016 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 1, 2016. The Respondent sent emails to the Center on April 4 and April 5, 2016
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 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Center notified the Parties of the commencement of the Panel appointment Process on April 19, 2016.
The Center appointed Maxim Waldbaum as the sole panelist in this matter on May 9, 2016. 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
B&H is a well-known photo and video equipment retail establishment located in New York and serves numerous customers per day physically as well as over its website. As an online retailer, B&H managed to be visited by more than 4.5 million users according to statistical survey websites. In addition to this, the website has many awards as a trusted and reputable seller based on customer reviews by well-known rating online establishments.
The Complainant is the registered owner of the valid trademarks for B&H and B&H PHOTO VIDEO PRO AUDIO and DESIGN, based the registration numbers 2229004 and 2230867 on the Principal Register of the United States Patent and Trademark Office ("USPTO"). The Complainant registered these trademarks in 1999. In addition, annexes indicate that the Complainant registered trademarks across various jurisdictions. None of these trademarks have ever been abandoned, cancelled or invalidated.
The Respondent created the Disputed Domain Name on May 6, 2015. After registration, apparently, the Respondent was using the website as a photo and video equipment retailer. After contacted by the Complainant, the Respondent converted the website as a simple blog entitled "Barry & Harry Photo Collages" at the top of the page but, ostensibly, nothing has been posted or inserted since the change. 5. Parties' Contentions A. Complainant
The Complainant alleges that: (a) The Disputed Domain Name is confusingly similar to the Complainant's mark.
The Complainant claims that the additional generic terms such as "photo" and "video" closely relate to and describe the Complainant's business and is confusingly similar to the Complainant's trademark.
(b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name
The Complainant avers that the Respondent is not commonly known by the Disputed Domain Name and has not been authorized, licensed or otherwise permitted by the Complainant to use and/or register to Disputed Domain Name.
The Complainant states that the Respondent cannot claim any use of the Disputed Domain Name for any bona fide offering of goods or services. Previously, the website had been used for selling products related to the Complainant's goods. The sale of products coupled with unauthorized use of the Complainant's trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii).
Further, after the Respondent received the Complainant's cease and desist letter, the Respondent modified the website to a WordPress blog template with the simple "Barry & Harry Photo Colleagues" title. The Complainant asserts that the display of a blank WordPress template does not amount to a bona fide offering of goods or services, or legitimate noncommercial fair use. (c) The Disputed Domain Name was registered and is being used in bad faith
The Complainant contends that bad faith is demonstrated through following facts;
The Respondent should have been aware of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant has marketed and sold its goods and services using the trademark since 1973, which was well before the Respondent's registration of Disputed Domain Name.
The Complainant claims that when the Respondent received the cease & desist letter, the website converted immediately to WordPress blank template with title "Barry & Harry Photo Colleagues" and lack of any content. Under Policy, paragraph 4(a)(iii), passively holding a domain name can constitute a factor in finding bad faith registration and use.
In addition, on August 17, 2015 the Complainant tried to contact the Respondent via email to prevent using the Disputed Domain Name. The Respondent replied by email by stating that it was ready to sell the domain name with a reasonable price. It is well known that seeking to profit from the sale of a domain name that incorporates a third-party's trademark demonstrates bad faith. B. Respondent
Respondent sent two emails to the Center.
The first email on April 4, 2016, indicates:
"This domain name doesn't interfere with trademark. Firstly the trademark name is with an "&" and secondly my domain name is .video this should not be taken from me"
The second email on April 5, 2016, states:
"After speaking to my lawyer I have concluded that you have no right to take this domain name from me as I am not interfering with any traffic and there is nothing doing with the site. Please close this case asap. If the bh photo wants to buy the domain name off me they can offer me a reasonable price."
The Respondent did not sent a formal response to the Complaint. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Disputed Domain Name is identically confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
Based on the trademark registrations cited by the Complainant, the Complainant has registered rights in the B&H trademarks. The Respondent does not dispute the validity of the B&H Trademarks.
It is well settled that a domain name is confusingly similar if it wholly incorporates the trademark. The Disputed Domain Name incorporates the Complainant's trademark in its entirety minus "&" which is not reproducible in a domain names and adds the "photo" suffix. That addition does not amount to a unique domain name. Accordingly, the Disputed Domain Name is not sufficiently distinguishable from the Complainant's mark. The addition of the suffix "photo" may strengthen the probability of the confusion in this case.
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance would often require the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No.. D2010-1762. Accordingly, a complainant needs only make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. "Upon such showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names." Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.
In this case, the Panel finds that the Complainant has made a prima facie showing that the respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
This finding is inter alia based on the following, non-disputed facts:
(1) The Complainant has no relationship or affiliation with the Respondent and has never authorized or licensed the Respondent to use its trademark or to apply for domain name use.
(2) The Disputed Domain Name has never been used in a bona fide commercial or noncommercial manner.
(3) The Respondent is not commonly known by the Disputed Domain Name.
Regarding to the Disputed Domain Name, the Respondent has used it to sell phot and video and only after receiving the Complainant's cease and desist letter changed the Disputed Domain Name to hold a WordPress blog. The Panel finds that such change in use is merely pretextual and telling of the Respondent's lack of rights or legitimate interest in the Disputed Domain Name.
Further, the Respondent cannot be said to be commonly known by the Disputed Domain Name. According to the registration, the domain name, which is based on Whois records, the registrant is "Avi Lang" and does not resemble the Disputed Domain Name in any manner.
Lack of rights or legitimate interests is further demonstrated by the willingness of the Respondent to offer the Disputed Domain Name for sale. When the Respondent was contacted by the Complainant to stop use of the Disputed Domain Name, the Respondent chose to offer selling the Disputed Domain Name.
Accordingly, the Panel finds the Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent's bad faith registration and use of the Disputed Domain Name has been proven.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be evidenced by four (non-exhaustive) factors set forth in the Policy, paragraph 4(b):
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 respondent's documented out-of-pocket costs directly related to the domain name; or
ii. the respondent 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 respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent'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 respondent's website or location or of a product or service on the respondent's website or location. Policy, paragraph 4(b).
In this case, the Respondent registered the confusingly similar Disputed Domain Name that contains the Complainant's trademark, while adding the generic term "photo". Further, the Respondent previously used the Disputed Domain Name commercially and only after receiving the Complainant's cease and desist letter changed its use to a WordPress blog site with the tittle "Barry & Harry Photo Collages". As discussed above, such change is only pretexual and telling of the Respondent's initial intent to benefit from the Complainant's goodwill in its trademark.
The Respondent offered to sell photo and video equipment for a while. After the Respondent received the cease and desist letter, the Respondent did not continue to operate its website as selling related products. This behavior is clear to the Panel that the Respondent operated in bad faith.
The Complainant contacted the Respondent via email to prevent use of its trademarks. The Respondent merely replied with an expectation of a reasonable sale price in exchange for the domain name. Bad faith can be further demonstrated by seeking profit from the sale of domain name.
The Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith. 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.
Maxim H. Waldbaum
Sole Panelist
Date: May 19, 2016
Full & Egal Universal Law Academy