The Complainant is Interbond Corporation of America d/b/a BrandsMart U.S.A. of Hollywood, Florida, United States of America ("United States"), represented by VLP Law Group LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Olubowale Timothy, Web of Ibadan, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 2, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2018, 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 July 11, 2018 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 July 14, 2018.
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 July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2018.
The Center appointed Richard Tan as the sole panelist in this matter on August 15, 2018. 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 retailer of household appliances, consumer electronics and computers through retail stores and on the Internet. It is the owner of the trademark BRANDSMART U.S.A. registered in the United States as Registration Nos. 1,754,384 on February 23, 1993 and 2,354,560 (design) on June 6, 2000 for services relating to retail stores featuring electrical appliances; namely, refrigerators, washing machines, dryers, ovens, ranges, stereo and TV components and accessories, video cameras, cameras, cellular phones, air conditioners, small household appliances, computers and accessories, automobile radios, amplifiers, speakers, alarms and radar detectors. It has sold its products through retail stores since 1982 and through its online business on the Internet under its website using the domain names and since 1995.
The disputed domain name was registered on March 1, 2018 and resolves to an active website featuring the Complainant's mark and offering goods and services similar to those of the Complainant and which compete with the Complainant's products. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark and the only difference between the two is that the disputed domain name omits the trailing term "USA" in the Complainant's trademark and substitutes that with the common descriptive term "ltd".
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not been authorized by the Complainant to register or use its trademarks. The Respondent's website's landing page features a logo that copies verbatim the Complainant's trademark displayed in the identical stylized font lettering and red white and blue colors of the Complainant's logo. The Respondent's website infringes the Complainant's mark, logo and website content down to the Complainant's address in Hollywood, Florida. The Respondent has not used the disputed domain name for a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The use of the counterfeit website shows the Respondent's continuing bad faith use of the disputed domain name to pass itself off as the Complainant and to confuse and deceive consumers and divert Internet traffic from the Complainant to the Respondent's website for commercial profit. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving each of the following elements:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds on the evidence adduced by the Complainant as to the registration of its trademark that the Complainant has rights in its trademark BRANDSMART U.S.A. Further, by its long and extensive use of its trademark in commerce the Panel finds that it has also acquired common law rights in its mark.
It is well accepted that 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.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
It is also well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity: see section 1.8, WIPO Overview 3.0.
In this case, the disputed domain name incorporates the dominant element of the Complainant's trademark BRANDSMART U.S.A. which is clearly recognizable as such, but with the omission of the trailing part of that trademark, i.e. USA, and the addition of the descriptive term "ltd" which is generally recognized as an abbreviation for "limited" that follows a business name to show it has limited liability.
As the disputed domain name consists of the dominant feature of the Complainant's mark, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark and that the mere addition of the descriptive term "ltd" is insufficient to prevent a finding of confusing similarity. See also BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson,WIPO Case No. D2008-1338, where it was found that the addition of the words "limited" and "innovation" to the complainants' mark did not prevent a finding of confusing similarity.
With regard to the generic Top-Level Domain ("gTLD") ".com" of the disputed domain name, the gTLD is viewed as a standard registration requirement and as such should be disregarded: see section 1.11.1, WIPO Overview 3.0.
The Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof is on a complainant to establish a lack of rights or legitimate interests on the part of the respondent, where a complainant is able to make out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element of the Policy: see section 2.1, WIPO Overview 3.0.
The Respondent has not submitted a Response to the Complainant's contentions.
There is no evidence that the Respondent has been commonly known by the disputed domain name. It is clear on the evidence that the Complainant has not in any way authorized or licensed the Respondent the right to use the Complainant's trademark.
As noted above, the disputed domain name resolves to the Respondent's website which contains features very similar in appearance to the Complainant's trademark and which sells similar goods as the Complainant. The Complainant contends that the Respondent has attempted to pass itself off as the Complainant through a "counterfeit" website using the disputed domain name. Such use does not constitute a bona fide offering of goods or services. See The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474 (finding that the respondent's use of domain names, which were confusingly similar to the complainant's mark, to sell competing goods was illegitimate and not a bona fide offering of goods); Ticketmaster Corporation v. DiscoverNet, Inc.WIPO Case No. D2001-0252 (finding no rights or legitimate interests where the respondent generated commercial gain by intentionally and misleadingly diverting users away from the complainant's site to a competing website).
The Panel finds that the Complainant has made out a prima facie case. The evidentiary burden shifts to the Respondent to show that it has rights or legitimate interests to the disputed domain name. The Respondent has not provided any evidence to that effect or that would otherwise demonstrate any rights or legitimate interests in the disputed domain name.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of 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 the respondent's website or location.
In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant's trademarks and that the Respondent has no legitimate interests in the disputed domain name.
The evidence also shows that the Respondent only registered the disputed domain name on March 1, 2018, which was a very substantial period of time after the Complainant first used and registered its trademark. The Respondent's website also contains the trademark and logo of the Complainant, with great similarity between the layout and arrangement of that website and the Complainant's website.
The irresistible inference is that the Respondent was clearly aware and had full knowledge of the Complainant's mark and its products at the time the disputed domain name was registered. The Respondent's actions in using its website in the manner described above could only have been deliberate, and designed to ride upon and take unfair advantage of the Complainant's reputation and goodwill in its trademark by confusing Internet users into thinking that its website was related to the Complainant and thereby driving traffic to its website and generating revenue. The Panel finds that the Respondent must have registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and to the products sold on the Respondent's website. As such, this would constitute bad faith registration and use.
In all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning 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.
Richard Tan
Sole Panelist
Date: August 25, 2018
Full & Egal Universal Law Academy