Complainant is Bluehost Inc., United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Borislav Misic, New Zealand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 Complainant on December 2, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 4, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 8, 2021. 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 Complainant is a company organized under the laws of the United States, which belongs to the Endurance International group of companies and is active in the web hosting services business, offering a comprehensive suite of tools to build online web presences. Complainant has evidenced to be the registered owner of numerous trademark registrations relating to its brand BLUEHOST, inter alia, but not limited to, the following: - Word mark BLUEHOST, United States Patent and Trademark Office (USPTO), registration number 3417116; filing date: April 12, 2007; publishing date for opposition: February 12, 2008; registration date: April 29, 2008; status: active. Moreover, Complainant has demonstrated to own, via the Endurance International group of companies, the domain name Respondent, according to the undisclosed WhoIs information for the disputed domain name, is a resident of New Zealand who registered the disputed domain name on March 26, 2008, which by the time of the rendering of this decision resolves to a parking page (with no further content) provided by the Registrar. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant points to the fact that it was founded and started using its BLUEHOST trademark in commerce already back in 2003, and nowadays is a leading provider of web hosting services worldwide, powering approximately 2 million websites every day. It also claims that its BLUEHOST trademark is very distinctive and has a strong reputation, given that it has been used for more than 17 years with trademark registrations in many countries worldwide. Complainant submits that the disputed domain name is identical to Complainant’s BLUEHOST trademark, as it merely consists of the latter, with the Top-Level Domain (“TLD”) “.asia” to be disregarded as a standard registration requirement for purposes of comparison of the disputed domain name and the relevant Complainant’s trademark. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use Complainant’s BLUEHOST trademark in any manner, (2) by failing to use the disputed domain name in connection with an active website, Respondent clearly has neither used the disputed domain name in connection with a bona fide offering of goods or services nor has Respondent been making a legitimate noncommercial or fair use thereof without intent for commercial gain, and (3) Respondent has never been commonly known by the disputed domain name and has never acquired any trademark rights therein. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the global reach and popularity of Complainant’s services under the BLUEHOST trademark, it is inconceivable that Respondent chose the disputed domain name without knowledge thereof, (2) Respondent registered the disputed domain name almost 5 years after Complainant first used its BLUEHOST trademark in commerce and almost 6 years after Complainant registered its domain name Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is identical to Complainant’s BLUEHOST trademark, and that Complainant, thus, has standing to file this UDRP Complaint. The disputed domain name exclusively incorporates the entire BLUEHOST trademark. Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1) that the applicable TLD in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test. Accordingly, the existence of the TLD “.asia” does not dispel the finding of identity arising from the entire incorporation of Complainant’s BLUEHOST trademark in the disputed domain name. The Panel further notes that there is a consensus view among UDRP panels according to which the fact that a domain name has been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element, provided that complainant’s trademark rights are in existence at the time the complaint is filed (see WIPO Overview 3.0, section 1.1.3). Accordingly, the fact that the disputed domain name was registered by Respondent already on March 26, 2008, while Complainant’s BLUEHOST trademark was registered only shortly thereafter, namely on April 29, 2008, is not in contrast to find that Complainant has standing to file this UDRP Complaint, but need be evaluated in context with the third element of the UDRP (see Section C. below). Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its BLUEHOST trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “bluehost” on its own. Finally, it appears that by the time of the rendering of this decision, the disputed domain name does not resolve to any active content on the Internet – and that it never has done so in the past. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1). Additionally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. As a general rule, Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put. Complainant contends, and Respondent has not challenged this contention, that its BLUEHOST trademark is very distinctive and has a strong international reputation, given that it has been used for more than 17 years with trademark registrations in many countries worldwide. Moreover, Respondent has failed to submit any explanation as to why it needed to rely exactly on the term “bluehost”, which apparently is not a dictionary term, but which is even identical – and not just confusingly similar – to Complainant’s BLUEHOST trademark. Accordingly, there is little to no room for any plausible use of the disputed domain name which would not take unfair advantage by profiting from the undisputed reputation which Complainant’s BLUEHOST trademark enjoys in the web services business. Against this background, the passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent has registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy. The Panel, in this context, has certainly also taken into account that the disputed domain name was registered by Respondent already on March 26, 2008, while Complainant’s BLUEHOST trademark was registered only shortly thereafter, namely on April 29, 2008. However, there is a consensus view among UDRP panels that in certain limited circumstances it may be justified to find that a respondent has acted in bad faith even if a complainant acquired trademark rights only after the domain name was registered provided that the facts of the case still establish that a respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent (typically as yet unregistered) trademark rights; such scenarios include the registration of a domain name e.g. shortly before or after announcement of a corporate merger, further to a respondent’s insider knowledge or following a complainant’s filing of a trademark application (see WIPO Overview 3.0, section 3.8.2). All of these scenarios have in common that the respondent under the facts to the case somehow anticipated the complainant’s trademark rights and, therefore, allow to conclude that a respondent unfairly took advantage of the complainant’s not yet existing, but soon to come trademark rights. The Panel recognizes clear analogies between the case at hand and these scenarios, especially given that (1) Complainant had started using its BLUEHOST trademark in commerce already back in 2003 and had registered its domain name “bluehost.com” even earlier, namely on November 15, 2002, and (2) Complainant applied for its BLUEHOST trademark already on April 12, 2007, thus well before the registration of the disputed domain name, which then took place right between the publication of Complainant’s trademark for opposition on February 12, 2008, and its final registration on April 29, 2008. Such specific timing clearly strengthens the Panel’s perception that Respondent was well aware of Complainant’s BLUEHOST trademark (application) when registering the disputed domain name and that such registration took place to unfairly profit from the reputation that Complainant by that time had already acquired in relation to the term “bluehost”, thus Respondent acted in bad faith as set forth by paragraph 4(b) of the Policy. In connection with this finding, it also carries weight in the eyes of the Panel that Respondent may have provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated December 7, 2020, could not be delivered because of a “bad address”. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding. Accordingly, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: January 15, 2021
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