The Complainant is Bombas LLC, United States of America, represented by Frankfurt Kurnit Klein & Selz, PC, United States of America (“US”).
The Respondent is peng bo, 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 February 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, 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 March 2, 2021 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 amendment to the Complaint on March 3, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021. The Center appointed George R. F. Souter as the sole panelist in this matter on April 23, 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 clothing manufacturer and retailer which, since 2013, has been using its BOMBAS trademark in particular in connection with the sale of socks of high quality and design. It has spent considerable amounts of money (tens of millions of US dollars in 2020 alone) in advertising its BOMBAS trademark, and promoting sales. The Complainant is the proprietor of numerous trademark registrations of its BOMBAS trademark in numerous jurisdictions, including US Federal Trademark Registration No. 4492577, dating from March 4, 2014, and US Federal Trademark Registration No. 6020322, dating from March 24, 2020. The disputed domain name was registered on September 17, 2020, and resolves to a website offering socks for sale (which might be counterfeit) in competition with the goods genuinely sold by the Complainant. 5. Parties’ Contentions The Complainant alleges that the disputed domain name is confusingly similar to its BOMBAS trademark, containing its BOMBAS trademark in its entirety, with the mere insertion of a hyphen between the elements “bom” and “bas”. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, so far as the Complainant has been able to establish, the Respondent is not generally known by the disputed domain name, and the Respondent has never been granted permission to use the Complainant’s BOMBAS trademark in connection with a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering goods in competition with those of the Complainant, with the suspicion of counterfeiting of the Complainant’s genuine goods. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied from the information provided that the Complainant has sufficient rights in its BOMBAS trademark for the purposes of these proceedings, and that the BOMBAS trademark enjoys considerable common law rights arising from trading. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds. The disputed domain name differs from the Complainant’s BOMBAS trademark merely by the addition of a hyphen between the “bom” and “bas” elements of the Complainant’s trademark. The Complainant’s BOMBAS trademark remains instantly recognisable in the disputed domain name. This, in the Panel’s opinion, is sufficient to justify a finding of confusing similarity between the Complainant’s trademark and the disputed domain name, and so finds. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstances of the present case, in which the Panel regards it as self-evident that the Complainant’s BOMBAS trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. It is well-established in prior decisions under the Policy that the use of a disputed domain name found to be confusingly similar to a complainant’s trademark, in connection with a website offering goods competing with the goods offered by the complainant, constitutes use of that disputed domain name in bad faith. That is clearly the case in the circumstances of the present case and, accordingly, the Panel finds that the disputed domain name in the present case is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 George R. F. Souter
Sole Panelist
Date: May 17, 2021
Full & Egal Universal Law Academy