The Complainant is Bombas LLC, United States of America, represented by Frankfurt Kurnit Klein & Selz, PC, United States of America (“US”).
The Respondent is caojie, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 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 amended Complaint on March 9, 2021. The Center verified that the Complaint together 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 March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 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. Both disputed domain names were registered on November 20, 2020, and at some point in time, they resolved to a website offering products for sale, similar to the products sold by the Complainant. At the time of the decision, the disputed domain names are being passively held. 5. Parties’ Contentions The Complainant alleges that the disputed domain names are confusingly similar to its BOMBAS trademark, containing its BOMBAS trademark in its entirety, with the mere addition of the letters “ocksx” and “ocksz” respectively. 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 names were registered in bad faith, and are being used in bad faith. 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 Complainant’s BOMBAS trademark is clearly recognizable in the disputed domain name, and the word “socks” can also be clearly seen at the end part of both disputed domain names. The overall impression of the disputed domain names, in the Panel’s opinion, produces both the Complainant’s trademark BOMBAS and the word “socks”, which is directly descriptive of the goods sold by the Complainant. In the Panel’s opinion, this recognition of the Complainant’s trademark and the Complainant’s product in the disputed domain name could be expected to come from the Complainant itself, and would be very likely to cause confusion as to the producer of the domain name. The Panel finds confusing similarity between the Complainant’s trademark and the disputed domain name. Accordingly, the Panel finds 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 names 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 names, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. The Complainant has submitted that the Respondent was using the Complainant’s trademark to compete with the Complainant by selling the same types of products sold by the Complainant. The Panel considers such use here to be use in bad faith. At the time of this decision, the disputed domain names are being passively held. It has become well-established in prior decisions under the Policy since the decision in Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that the non-use of a disputed domain name does not preclude a finding of use in bad faith, providing that a complainant has a legitimate concern that any commencement of use of a disputed domain name is likely to cause damage to the complainant’s interests. In the circumstances of the present case, where the Panel is convinced that the Respondent has deliberately engineered the disputed domain names from the Complainant’s trademark, with its business in mind, the Panel has had no difficulty in accepting that the Complainant has a legitimate interest in preventing damage to its interests arising from any usage of both disputed domain names. Accordingly, the Panel finds that both disputed domain names are being used in bad faith, and that the Complainant has satisfied the dual 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 names George R. F. Souter
Sole Panelist
Date: May 17, 2021
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