The Complainant is Bombas LLC, United States of America (“United States”), represented by Frankfurt, Garbus, Kurnit, Klein & Selz, PC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org United States / CTZTECH, Bighorse Cedrick, 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 May 10, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 24, 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 Founded in 2013, the Complainant is a Delaware limited liability company that is a clothing manufacturer and retailer. The Complainant has been continuously using its trademarks in connection with high-quality socks, as well as other clothing items, that are of superior quality. The Complainant’s business model is centered on its core mission to help the homeless by providing them with the most requested clothing item at homeless shelters – socks. For every pair of socks or other clothing item purchased by a customer, the Complainant donates a pair of socks or other clothing item to someone in need. The Complainant owns a number of trademark registrations for the BOMBAS trademark in the United States and other jurisdictions. These include, but are not limited to: BOMBAS, United States Trademark Registration No. 4,492,577, registered on March 4, 2014 in international class 25; and BOMBAS and design, United States Trademark Registration No. 5,359,406, registered on December 19, 2017 in international class 25 (hereinafter collectively referred to as the “BOMBAS Mark”). The Complainant is also the owner of the The Disputed Domain Name was registered on December 10, 2020. Based on the January 5, 2021 screenshot provided in the Complaint, the Disputed Domain Name resolved to the Respondent’s competing website at “www.socksbombas.com” that marketed and sold socks, called “bassocks-bomsocks.” In addition, the Respondent used a copy of a photograph of the Complainant’s own products on the competing website to advertise those of the Respondent. The Complainant provided evidence of the Respondent’s resolving website, which changed the competing website referenced above to a blank WordPress landing page. As of the writing of the decision, the Disputed Domain Name resolves to a website called “Costa” that purportedly sells sunglasses for men and women. The website is almost identical to the website for “Costa del Mar”, a company unrelated to the Complainant in this proceeding. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s BOMBAS Mark. - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. - 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 and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the BOMBAS Mark. It is uncontroverted that the Complainant has established rights in the BOMBAS Mark based on its years of use as well as its registered trademarks for the BOMBAS Mark in the United States and other jurisdictions. 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 BOMBAS Mark. The Disputed Domain Name consists of the BOMBAS Mark in its entirety preceded by the dictionary term “socks”, 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 deemed 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 or descriptive word to a trademark does not 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. Finally, 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 disputed 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. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s BOMBAS Mark. 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 its BOMBAS Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the initial use made of the Disputed Domain Name to resolve to the Respondent’s competing website, on which it was marketing and selling socks, 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 BOMBAS Mark for commercial gain and to deceive Internet users who believed they arrived at the Complainant’s official website. Finally, the composition of the Disputed Domain Name, comprising the entirety of the BOMBAS Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively infringes and suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. 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. First, based on the circumstances here, the Panel concludes that the Respondent registered and is using 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 BOMBAS Mark 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 has been done for the specific purpose of trading on the name and reputation of the Complainant and its BOMBAS Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi/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”). Second, the Panel finds that the Respondent knew that the Complainant had rights in the BOMBAS Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name several years after the Complainant first used and obtained its trademark registrations for the BOMBAS Mark and the Respondent used the Complainant’s BOMBAS Mark and photographs of the Complainant’s products on its resolving website, making clear that the Respondent was well aware of the Complainant and its BOMBAS Mark, demonstrating bad faith. Therefore, it strains credulity to believe that the Respondent had not known of the Complainant or its BOMBAS Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”). In sum, the Panel finds it likely that the Respondent had the Complainant’s BOMBAS Mark in mind when registering the Disputed Domain Name. Finally, the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business by diverting Internet users who were searching for the Complainant’s products from its official website as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. Moreover, UDRP panels have consistently found that the mere registration of a disputed domain name that reproduces a well-known trademark in its entirety (being identical or confusingly similar to such trademark) plus a descriptive term, can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Further, the Disputed Domain Name 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: June 26, 2021
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