The Complainant is BiggerPockets, Inc., United States of America (“United States”), represented by Ballard Spahr, LLP, United States.
The Respondent is James Fox, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on October 16, 2019. The Center appointed Dennis A. Foster as the sole panelist in this matter on October 18, 2019. 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 that markets real estate investment content and software, primarily through its website found at “www.biggerpockets.com”. The Complainant also does business in connection with its BIGGERPOCKETS service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Registration No. 3224955; registered April 3, 2007). The disputed domain name was registered on December 23, 2018. The disputed domain name now resolves to a website that contains advertisements, services and information related to real estate and to the Complainant’s competitors. 5. Parties’ Contentions A. Complainant - The Complainant is a United States company that provides real estate investment content and tools to its approximately 1.4 million customers, particularly through podcasts, forums, etc. found on its website located at “www.biggerpockets.com”. Since at least 2003, the Complainant has distributed its services and products under its registered BIGGERPOCKETS service mark. - The disputed domain name incorporates fully the Complainant’s BIGGERPOCKETS mark and is thus confusingly similar to that mark. The addition of the generic descriptor, “real estate”, fails to offer any meaningful distinction, especially because that term is directly applicable to the Complainant’s goods and services. The inclusion of the generic Top-Level Domain (“gTLD”), “.com”, must also be disregarded in this comparison. - The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has no affiliation or membership with the Complainant and has not been authorized to use the Complainant’s mark in any manner. The Respondent’s use of the disputed domain name, i.e. for a website that presents advertisements for real estate services, listings, membership packages and the products of the Complainant’s competitors, constitutes neither a “bona fide offering of goods or services” nor a “legitimate noncommercial or fair use” of the disputed domain name. - The disputed domain name was registered and is being used in bad faith. The website associated with the disputed domain name includes both the Complainant’s service mark and logo, a clear indication of bad faith. The Respondent’s refusal to respond to the Complainant’s demand letter, sent initially on July 11, 2019, is further evidence of bad faith on the part of the Respondent. Moreover, the reference to the Complainant as a “featured member” and the offer of costly membership packages on the Respondent’s website are conclusive evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to that website due to the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services advertised on the website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under Policy paragraphs 4(a)(i) and (iii), the Panel may decide for the Complainant and grant it a transfer of the disputed domain name if the Complainant demonstrates that: - the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has presented the Panel with comprehensive evidence of its registration with the USPTO for the service mark BIGGERPOCKETS, and therefore the Panel concludes that the Complainant possesses the requisite rights in that mark per Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and Lilly ICOS LLC v. Andrew Riegel,WIPO Case No. D2006-1088. The disputed domain name contains the Complainant’s service mark in full and the descriptive term “real estate”. The Panel is in agreement with the consensus of prior UDRP decisions that the addition of a descriptive or common term to an established mark in a disputed domain name fails to create a distinction sufficient to avoid a finding that the disputed domain name is confusingly similar to that mark. Finally, the inclusion of the gTLD, “.com”, in a disputed domain name usually is of no consequence in an analysis of confusing similarity. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BIGGERPOCKETS mark. See, NUVEEN v. Private Registration,WIPO Case No. D2017-0453 (finding, among other disputed domain names, As reasoned above, the Panel finds that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests If the Complainant can present a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of proof shifts to the Respondent to produce convincing evidence that it does have rights or legitimate interests in the disputed domain name. See, Hermès International v. Registrant [3585485]: Boris Moser,WIPO Case No. D2011-0406 (“It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.”); and Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”). The Complainant has proved to the Panel’s satisfaction that the disputed domain name is confusingly similar to the Complainant’s valid service mark, and contends, without contradiction from the Respondent, that there is no affiliation or authorization between the Complainant and the Respondent that would allow the Respondent to use that service mark for any purpose. This showing and contention cause the Panel to conclude that the Complainant has sustained a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to file a Response in these proceedings, so the Panel will consider whether there is any evidence in the Complaint, or otherwise in the record, sufficient to rebut the Complainant’s prima facie case. In doing so, the Panel will accept as true any reasonable contentions found within the Complaint. See, RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant.”). The Panel finds no evidence in the Complaint that the Respondent is using the disputed domain name for “a bona fide offering of goods and services” per Policy paragraph 4(c)(i). Instead, the Panel accepts the Complainant’s contention and evidence that the Respondent has attached a website to the disputed domain name that offers membership packages and links to other services that compete directly with those offered by the Complainant. See, Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Moataz Mohsen, YAHO,WIPO Case No. DME2014-0003 (“The [disputed] Domain Name is used for a website that offers [...] services that compete directly with those offered by the Complainant. This use [...] cannot be considered a use in connection with a bona fide offering of goods or services within the meaning of the Policy, paragraph 4(c).”); and WGCZ S.R.O. v. Andrey Kuzmenko / WhoIsProtectService.net Protectservice, Ltd.,WIPO Case No. D2014-1420 (“It is well established that using the [disputed] Domain Name for web pages with commercial information trading on the goodwill of the Complainant’s trademark (as may be evidenced by direct or indirect links to competitors, websites or goods) does not constitute a bona fide offering of goods or services [...]”). With respect to Policy paragraph 4(c)(ii), the Panel sees no evidence in the Complaint or record that would indicate that the Respondent, James Fox, could be commonly known by the disputed domain name. Moreover, there is no evidence to suggest to the Panel that the Respondent owns a company and that that company could be commonly known as the disputed domain name. Therefore, the Panel rules that paragraph 4(c)(ii) is inapplicable. The use described above to which the disputed domain name is being put, namely to offer services that compete with those of the Complainant, presumably for remuneration to the Respondent, also fails to constitute “a legitimate noncommercial or fair use” of the disputed domain name in line with Policy paragraph 4(c)(iii). See, Talx Corporation v. Husam Abboud,WIPO Case No. D2007-0186 (“Where [...] the domain name in issue resolves to a website [...] offering services which compete directly with those offered by the Complainant under its [...] trademark, it is powerful evidence that such use of that domain name is neither a bona fide offering of services nor a legitimate or fair use.”) Since the Panel has found no evidence to contradict the Complainant’s prima facie case as established above, the Panel is compelled to rule that that case is decisive in these proceedings. Accordingly, the Panel finds that the Complainant has succeeded in showing that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Policy paragraph 4(b) lists four circumstances that may give rise to a finding of bad faith registration and use of a disputed domain name. One of these, paragraph 4(b)(iv), specifies grounds for a bad faith finding as follows: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.” Among the evidence presented by the Complainant, and accepted by the Panel, is a screen shot of the Respondent’s website at the disputed domain name. That screen shot clearly shows the Complainant’s mark and logo as well as references to real estate investment services and links to websites of the Complainant’s competitors which could easily confuse Internet users as to whether the Respondent’s website is affiliated with or endorsed by the Complainant. Moreover, it is obvious to the Panel that the Respondent’s use of the disputed domain name was designed to elicit commercial gain for the Respondent from Internet users interested in real estate investment advice and/or membership packages. Consequently, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith per Policy paragraph 4(b)(iv). See, Tipico Co. Ltd. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2019-1155 (“[The disputed domain name] resolves to a website offering [...] services that compete with those of the Complainant; and the website in fact prominently displays one of the Complainant’s trademarks [...] this establishes to the Panel’s satisfaction that the Respondent is intentionally attempting to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.”). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. In line with the reasoning above, the Panel finds that the Complainant has shown that the disputed domain name was registered and is being used 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 Dennis A. Foster
Sole Panelist
Date: November 1, 2019
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