The Complainant is Super73, Inc., United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, P.C., United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Paul Correa, Jack North Enterprises, LLC, 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 March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 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 5, 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 5, 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 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 1, 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 retail store in the United States that builds and sells SUPER73-branded electric bicycles, motorbikes, accessories, and other related items. The Complainant is well known and popular in the United States and many other countries worldwide. The Complainant owns trademark registrations in the United States, the United Kingdom, and the European Union, including the following: SUPER 73, United States Trademark Registration No. 5,256,081, registered on August 1, 2017, in international class 12; 73, United States Trademark Registration No. 5,755,697, registered on May 21, 2019, in international class 12; 73, United Kingdom Trade Mark Registration No. UK00003417298, registered on October 18, 2019, in international class 12; and 73, European Union Trade Mark Registration No. 018100617, registered on December 13, 2019, in international class 12 (hereinafter collectively referred to as the “SUPER73 and 73 Marks”). The SUPER73 and 73 Marks have been in use in commerce as early as May 26, 2016. The Disputed Domain Name was created on May 29, 2019, and resolves to a website hosted by the Respondent that markets and sells electric bicycle parts, accessories, decals, paints, and apparel, all of which are directed at and marketed to users of SUPER 73 electric bicycles. The Respondent’s website currently informs customers that the Respondent has changed its address to “www.custom-ebikes.com”. The new website is not functional. Clicking on the website at “www.custom-ebikes.com”, one arrives at a landing page with pay-per-click sponsored links. Clicking on the same site as before at “www.custom73.com”, one arrives at the same page as before, including the offering of electric bicycle parts and related items that bear the SUPER 73 and 73 Marks. The homepage states: “Error! Hyperlink reference not valid.” 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademarks; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) The Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to the trademark or trademarks. The Panel concludes that the Disputed Domain Name is confusingly similar to the SUPER 73 and 73 Marks. It is uncontroverted that the Complainant has established rights in the SUPER 73 and 73 Marks based on its several years of use as well as its registered trademarks for the SUPER 73 and 73 Marks in the United States, United Kingdom, and the European Union. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the SUPER 73 and 73 Marks. The Disputed Domain Name consists of the 73 Mark in its entirety preceded by the dictionary term “custom” and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary term to a trademark is insufficient to prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Moreover, since the Complainant’s electric bicycles and accessories have a large following, those customers would likely associate the Disputed Domain Name with the Complainant. The confusing similarity between the Disputed Domain Name and the Complainant’s Marks is even more pronounced since the website to which the Disputed Domain Name resolves includes many references to the Complainant’s branded goods that the Respondent promotes and sells without the Complainant’s permission, as well as liberal use of the Complainant’s SUPER73 and 73 Marks. See section 1.15, WIPO Overview 3.0. Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well-established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use the SUPER 73 and 73 Marks. Nor does the Complainant have any type of business relationship with the Respondent. The Respondent is not an authorized dealer or reseller of the Complainant’s products. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Moreover, based on the use made of the Disputed Domain Name to resolve to a website operated by the Respondent and used to sell electric bicycle parts and accessories, including those built and sold by the Complainant, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the Disputed Domain Name for commercial gain. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. Based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SUPER 73 and 73 Marks as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its SUPER 73 and 73 Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). Moreover, the Panel finds that the Respondent had actual knowledge of the Complainant’s SUPER 73 and 73 Marks when registering the Disputed Domain Name, demonstrating bad faith. The Respondent used its website to sell, among other things, electric bicycle parts, accessories and related goods, many of which were the Complainant’s popular brand. Thus, it is highly likely that the Respondent had the Complainant in mind when registering and using the Disputed Domain Name, especially using the number “73” as part of the Disputed Domain Name, recognizable by bicycle enthusiasts as referring to the Complainant. Further, after the commencement of these proceedings, the Respondent changed its web address, deleting the “73” that is a registered trademark of the Complainant, but continuing to sell electric bicycle parts and accessories for the Complainant’s branded electric bicycles without a contract or license with the Complainant to do so. Such conduct is indicative of bad faith. The Panel moreover notes that the Respondent’s website currently informs customers that the Respondent has changed its address to “www.custom-ebikes.com”, thus implying that the Respondent itself would acknowledge the above. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun
Sole Panelist
Date: April 14, 2021
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