The Complainant is BDSRCO, INC., United States of America (“United States”), represented by Bone Mcallester Norton PLLC, United States.
The Respondent is Ronald Hamilton, 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 February 11, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2021, 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 February 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 22, 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 The Complainant is a corporation established under the law of Florida and headquartered in East Bradenton, Florida, United States. The Complaint provides little information about the Complainant, but its website at “www.beallsflorida.com” indicates that the Complainant has operated retail stores in Florida since 1915 and reports that currently, “Bealls surpasses a billion dollars in sales annually with over 500 stores” in addition to online sales of “apparel and home goods”. The Complainant holds the following United States trademark registrations: MARK REGISTRATION NUMBER REGISTRATION DATE BEALLS 4733841 May 12, 2015 BEALLS OUTLET 4733843 May 12, 2015 The Complainant also has pending applications with the United States Patent and Trademark Office (USPTO) to register logos featuring the words BEALLS and BEALLS OUTLET as design marks. These logos are displayed on the Complainant’s website. The Registrar reports that the Domain Name was registered on November 17, 2020, by the Respondent, listing no organization and showing a postal address in Deerfield Beach, Florida, United States (where the Complainant operates a BEALLS department store). The Domain Name resolves to a website headed “BeallsFloridaSurvey.Com”, which displays one of the Complainant’s logos that appears on the Complainant’s website. The site (the “Respondent’s website”) presents itself as a site published by the Complainant, with information “About Bealls Florida”, including photos of one of the Complainant’s department stores and one of its outlet stores, as well as a link to the Complainant’s website. Text on the page thanks the user for “your recent visit to Beall’s Department Stores” and asks the user to take a survey, in exchange for entry into a drawing for a chance to receive a USD 500 gift card. The user is asked to submit personal information as part of the “survey”, including full name, email, and postal address, and information from a recent store purchase receipt. 5. Parties’ Contentions A. Complainant The Complainant refers to its existing trademark registrations and pending trademark applications. The Complainant argues that the Respondent “uses the domain name to redirect internet users to the websites of third parties who provide services that are the same as or closely related to department store services”. The Complainant contends that the “Respondent registered and is using the disputed domain name in order to disrupt the Complainant’s business and to misappropriate the Complainant’s goodwill by deceiving Internet users as to the Complainant’s sponsorship, affiliation, or endorsement of the Respondent’s website.” B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or 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 domain name; and, (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered BEALLS trademarks. The Domain Name incorporates this mark in its entirety and adds the geographic name “florida” and the dictionary word “survey”, which do not avoid confusing similarity (see id. section 1.8). As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.1. The Panel concludes that the first Policy element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use 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) that the respondent has been commonly known by the domain name, even if it has acquired no 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use of the Domain Name, not to provide similar services as stated in the Complaint, but to impersonate the Complainant and attempt to induce site visitors to furnish their personal information under false pretenses. This prima facie case made by the Complainant shifts the burden to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so, and the Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) 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 web site or location.” The Complainant’s BEALLS mark has been in use for many years, and the Respondent is clearly familiar with it, as the Respondent’s website copies the Complainant’s logo, photos, and business description and plainly attempts to give the impression that the website is affiliated with the Complainant. The Respondent’s website is set up as a “survey” of recent BEALLS customers, supposedly on behalf of BEALLS and offering a chance to win a gift card, although the Respondent has no connection to BEALLS, as part of what appears to be a phishing scheme to collect personal data, at best for deceptive marketing purposes and at worst for fraud or identity theft. In any case, such intentional confusion for commercial gain or illicit purposes must be considered bad faith under the Policy. See WIPO Overview 3.0, section 3.4 (copycat websites and other deceptive practices as instances of bad faith). The Panel concludes that the Complainant has established the third element of the Complaint, bad faith in the registration and use of the Domain Name. 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 Domain Name, W. Scott Blackmer
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Sole Panelist
Date: March 25, 2021
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