The Complainant is Bissell Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is samdy chen, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2020. On that same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2020, 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 29, 2020 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 31, 2020. The Center verified that the Complaint, along 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 August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 9, 2020. 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 Bissell Inc., a United States company that manufactures and markets vacuums, sweepers, carpet cleaning machines, hard floor cleaners and cleaning formulas. The Complainant owns the following trademark registrations, among others: Trademark Registration Number Registration Date Classes Jurisdiction BISSELL 0705542 October 11, 1960 9, 21 United States BISSELL 0710700 January 31, 1961 3, 5 United States The Complainant’s wholly owned subsidiary, Bissell Homecare, Inc., owns the following trademark registrations: Trademark Registration Number Registration Date Classes Jurisdiction BISSELL 145575 January 21, 1991 21 Ireland BISSELL 962479 March 14, 1997 9 China BISSELL 000565267 April 12, 2001 3, 7, 21 European Union The Complainant is the holder of the domain name The disputed domain name was registered on May 29, 2020. At the time of filing the Complaint, the disputed domain name resolved to a web site which comprised images of carpet cleaners, spot cleaners, steam cleaners, vacuum cleaners and wet cleaners which were offered for sale corresponding to those made available on the Complainant’s official web site. 5. Parties’ Contentions A. Complainant The Complainant asserted the following: That the Complainant was founded in Michigan by Melville R. Bissell and his wife Anna Bissell. That after 140 years of having been founded, the Complainant has grown and expanded to sell its products in dozens of countries around the world, in the industry of floor care appliances. That the Complainant has a strong Internet presence through the web site to which its domain name That the Complainant’s trademark BISSELL is well recognized and respected worldwide. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. That the disputed domain name is confusingly similar to the trademark BISSELL. That, when comparing a disputed domain name to a complainant’s trademark, it is standard practice to disregard the generic Top-Level Domain (“gTLD”) into account. That the term “online store” is closely associated with the Complainant’s trademark BISSELL, which fact increases the confusing similarity between the disputed domain name and said trademark. That the Respondent’s use of the disputed domain name to host a website that features Complainant’s trademark BISSELL and offers its products without authorization contributes to the confusing similarity. The Respondent has no rights to or legitimate interests in the disputed domain name. That the Complainant has exclusive right to use its trademark BISSELL in commerce. That the Respondent is not commonly known by the term “bissell”. That the Complainant has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademark BISSELL. That the Respondent is not making a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name. That the Respondent has incorporated to the website to which the disputed domain name resolved a variant of the Complainant’s design and some images taken from its official web page. That the Respondent was using the disputed domain name to confuse consumers into thinking that the web site to which it resolves is related to the Complainant. That the Respondent has taken advantage of the fame and goodwill of the Complainant’s trademark BISSELL. That, on the web site to which the disputed domain name has resolved, the Respondent has failed to disclose that said Respondent is not related to the Complainant. That the Respondent has created the false impression that he was authorized to use the Complainant’s trademark and sell the Complainant’s products. That the Respondent has indicated that the web site to which the disputed domain name has resolved is owned and operated by “Bissell International”. The disputed domain name was registered and is being used in bad faith. That the Complainant and its trademark BISSELL are known internationally. That the Complainant has marketed and sold its products and services using the trademark BISSELL since 1876, more than a century before the date of registration of the disputed domain name. That the use of the disputed domain name by the Respondent demonstrates his knowledge of and familiarity with the Complainant’s trademark BISSELL, and its business. That the Respondent’s actions have created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. That the Respondent is using the fame of the Complainant’s trademark BISSELL to improperly increase traffic to the web site to which the disputed domain name has resolved, for commercial gain. That the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (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 with respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw the inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V.,WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has submitted evidence showing that it, and its subsidiary Bissell Homecare, Inc., own registrations for the trademark BISSELL in various jurisdictions since 1960, including China where the Respondent has indicated to have his place of residence. The disputed domain name is confusingly similar to the Complainant’s trademark BISSELL, as it incorporates said trademark in its entirety. The terms “online” and “store” do not sufficiently distinguish the disputed domain name from the Complainant’s trademark BISSELL. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see also F. Hoffmann-La Roche AG v. n/a, Whois Privacy Protection Service,WIPO Case No. D2013-0599, The addition of the gTLD “.com” to the disputed domain name is a technical requirement of the Domain Name System (DNS) and has no legal significance in the present case (see Section 1.11 of the WIPO Overview 3.0; see also Facebook, Inc. v. Super Privacy Service LTD c/o Dynadot / Xiamen Tianmu zhuangshi sheji youxian gongsi,WIPO Case No. D2020-0885). The first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it did no acquire 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 Complainant has claimed that it has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademark BISSELL. Furthermore, the Complainant has asserted that the Respondent is not commonly known by the term “bissell” and that he has no rights to or legitimate interests in the disputed domain name. Finally, the Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate, noncommercial or fair use of it. The Respondent did not challenge any of the Complainant’s contentions. In accordance with the evidence submitted by the Complainant, the disputed domain name resolved to a web site which comprised images of carpet cleaners, spot cleaners, steam cleaners, vacuum cleaners and wet cleaners which were offered for sale therein. Said images correspond to those made available on the Complainant’s official web site. Moreover, the case file contains evidence showing that the web page to which the disputed domain name resolves, displays the Complainant’s trademark BISSELL with slight variations in its design, as well as the text “Bissell International”. Therefore, the Respondent has impersonated the Complainant for commercial gain. Such conduct cannot be considered as use of the domain name in connection with a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use (see section 2.5.1 of the WIPO Overview 3.0; see also FIL Limited v. Alexander Smith,WIPO Case No. D2020-0227; Oculus VR, LLC v. Sean Lin,WIPO Case No. DCO2016-0034). The consensus view among panels appointed under the Policy is that the use of a domain name for illegal activity, such as impersonation or passing off, cannot confer rights or legitimate interests in a domain name (see section 2.13 of the WIPO Overview 3.0, see also Self-Portrait IP Limited v. Franklin Kelly,WIPO Case No. D2019-0283). In the absence of any explanation from the Respondent, the Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0; see also WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL,WIPO Case No. D2018-1581; INTOCAST AG V. LEE DAEYOON,WIPO Case No. D2000-1467). The requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or 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 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 respondent 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 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 Complainant has proven that it owns registrations for its trademark BISSELL, which are significantly senior to the registration of the disputed domain name, and some of which have been obtained in China, where the Respondent has declared to have his place of residence. Considering the above, and the fact that the web page to which the disputed domain name resolves displays the Complainant’s trademark BISSELL (which is not a dictionary term, and which is directly associated with the cleaners sold by the Complainant), and that said web page incorporates reproductions of the images pertaining to the Complainant’s official web site, it is reasonable to infer that the Respondent knew about the Complainant, its trademark and its business when he registered the disputed domain name (see section 3.1 of the WIPO Overview 3.0; see also Claudie Pierlot v. Yinglong Ma,WIPO Case No. D2018-2466; Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145). The Panel finds that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s web site by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark. Such conduct constitutes opportunistic bad faith registration of the disputed domain name, in accordance with the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003: Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). The Respondent’s impersonation of the Complainant constitutes bad faith use under the Policy (see section 2.5.1 of the WIPO Overview 3.0; see also Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly,WIPO Case No. D2019-0283). The Respondent’s conduct has created a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name has resolved, which amounts to bad faith under paragraph 4 (b)(iv) of the Policy (see also 1IQ PTY LTD v. 1337 Services LLC,WIPO Case No. D2017-2156; Facebook, Inc., WhatsApp Inc. v. Wisdom King, Wizindo,WIPO Case No. D2019-2517). The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith. Consequently, the third element of the Policy has been met. 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 Kiyoshi Tsuru
Sole Panelist
Date: September 23, 2020
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