ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION J-B Weld Company, LLC v. jack hurch Case No. D2023-3911 1. The Parties Complainant is J-B Weld Company, LLC, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States. Respondent is jack hurch, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger, UAB (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2023. On September 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2023, 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 (Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to Complainant on September 26, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 28, 2023. 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 25, 2023. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 14, 2023. page 2 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 Complainant, J-B Weld Company, LLC, is a United States based company that produces epoxy products for sale in the United States and internationally. Complainant has used the name and mark J-B WELD in connection with its epoxy products for over 50 years and has obtained a number of trademark registrations for its J-B WELD mark in many countries around the world. Of particular relevance to this proceeding, Complainant owns a registration in the United States for the J-B WELD mark as a word mark (Registration No. 1008265, which issued to registration on April 8, 1975) and as part of a stylized logo (Registration Nos. 2032175,4869402, 1300056, the earliest of which issued to registration in 1984). Complainant also owns and uses the domain name to provide information concerning Complainant and its products and services and for email purposes. Respondent is an individual based in the United States. Respondent registered the disputed domain name on June 15, 2023. At some point thereafter, Respondent used the disputed domain name with a website that included Complainant's J-B WELD logo and which purported to provide information concerning Complainant and its products. On or about August 22, 2023, Complainant sent a takedown request to the hosting company of record, and although Complainant received no response to its letter the website at the disputed domain was removed and replaced with a "Account Suspended Page". Complainant also attempted to contact Respondent regarding the disputed domain name through an email address with the privacy service used for the disputed domain name. No response to Complainant's letter was received. 5. Parties' Contentions A. Complainant Complainant maintains that its J-B WELD mark has garnered much reputation and goodwill in the marketplace on account of Complainant's use of the mark for the past 55 years. Complainant also maintains it has strong rights in the J-B WELD mark through its numerous trademark registrations in the United States and internationally. Complainant argues that the disputed domain name is confusingly similar to the J-B WELD mark as it fully incorporates the J-B WELD mark followed by "co", the commonly known abbreviation for "company". Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the disputed domain name, (ii) has not been authorized by Complainant to use the J-B WELD mark, (iii) has used the disputed domain to suggest an implied affiliation with Complainant, including by posting a website at the disputed domain name that contains statements and information that tends to suggest or give the impression that the disputed domain name and website are connected to Complainant, and (iv) has failed to respond to Complainant's pre-complaint cease and desist letter. Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith insofar as Respondent, who has no connection to Complainant, knowingly registered the disputed domain name based on Complainant's known J-B WELD mark and used it with a website that suggested an affiliation, sponsorship or endorsement by Complainant. Additionally, Complainant argues that Respondent has acted in bad faith by failing to respond to Complainant's "cease and desist email". page 3 B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Complainant has provided evidence that it owns trademark registrations for the J-B WELD mark in multiple countries around the world, including the United States, and that it has used the J-B WELD mark well before Respondent registered the dispute domain name. With Complainant's rights in the J-B WELD mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet this standing requirement. In the instant proceeding, the disputed domain name is confusingly similar to Complainant's J-B WELD mark as it fully incorporates Complainant's J-B WELD mark. The addition of the abbreviation "co", which is commonly used as a short form for "company" does not prevent the Complainant's J-B WELD mark from being clearly recognizable in, and the dominant component of, the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's J-B WELD mark and in showing that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that purports to provide information regarding Complainant and Complainant's J-B WELD products. The website, for example, contains images and text concerning Complainant's various products as well as information regarding Complainant's executives, office location, and manufacturing facilities. However, as the website has been suspended, it is not altogether clear from the evidence submitted whether page 4 Respondent's website at the disputed domain name has another purpose, such as providing links to other websites or possibly is part of some unknown scheme. To be sure, not only does the disputed domain name imply a connection to Complainant by essentially copying Complainant's name, but the website at the disputed domain name is designed to make it appear as though it is related to Complainant. The website features Complainant's logo and product images. It also uses text that suggests that the website is an official website of Complainant, such as "J-B WELD Company thanks you for your interest in our products", along with testimonials addressed to J-B Weld as a company. In all, the website at the disputed domain name essentially impersonates or suggests some form of connection, sponsorship or endorsement by Complainant, when none exists. Given Respondent's actions and failure to appear in this proceeding to defend its actions, it is evident that Respondent is not making a legitimate or fair use of the disputed domain name. WIPO Overview 3.0 at sections 2.5.1 and 2.8.2. As such, Complainant prevails under the second element. C. Registered and Used in Bad Faith In view of the fact that Respondent has registered the disputed domain name that fully incorporates Complainant's J-B WELD mark with the abbreviation for "company", and given Respondent's above noted actions and failure to appear in this proceeding, it is easy to infer that Respondent was likely well aware of Complainant's J-B WELD mark when Respondent registered the disputed domain name. Given the longstanding use of Complainant's J-B WELD mark in connection with epoxy products and the likelihood that the disputed domain name and associated website are likely to be viewed by consumers as an official website of Complainant, it is evident that Respondent has opportunistically registered and used the disputed domain name to intentionally and misleadingly attract Internet users to Respondent's website for Respondent's own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein). Accordingly, the Panel finds that Complainant succeeds under this element 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 be transferred to Complainant. /Georges Nahitchevansky/ Georges Nahitchevansky Sole Panelist Date: November 28, 2023
Full & Egal Universal Law Academy