ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Books-A-Million, Inc. v. Host Master, 1337 Services LLC / Host Master, Njalla Okta LLC Case No. D2025-3075 1. The Parties The Complainant is Books-A-Million, Inc., United States of America (“United States”), represented by Ropes & Gray LLP, United States. The Respondent is Host Master, 1337 Services LLC / Host Master, Njalla Okta LLC, Saint Kitts and Nevis. 2. The Domain Names and Registrar The disputed domain names and are registered with Tucows Domains Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2025. On August 4, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 5, 2025, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2025, 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 August 7, 2025. 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 August 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2025.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on September 5, 2025. 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 leading privately held book retailer in the United States operating by both retail stores and e-commerce. It owns the trademark BOOKS-A-MILLION registered under registration number 1561587 for retail book services in the United States since October 17, 1989. The disputed domain name was registered on August 7, 2022 and does not point to an active site and the disputed domain name was registered June 29, 2024 and points to a site that offers competing book retailing services to those of the Complainant. The registrants have been the subject of multiple adverse decisions in the UDRP for registration and use of the trade marks of third parties in bad faith. For example, Compagnie Générale des Etablissements Michelin v. Host Master, 1337 Services LLC, WIPO Case No. D2024-1813 and ONCOPACA-CORSE v. Host Master, Njalla Okta LLC, WIPO Case No. D2024-5152. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that: The disputed domain names are confusingly similar to the Complainant’s prior registered BOOKS-A-MILLION mark substituting the letter “m” with the letters “tr” and adding the generic top level domain (“gTLD”) “.com”, and in the case of the disputed domain name omitting its hyphens, none of which prevent confusing similarity between the disputed domain names and the Complainant’s mark. The Respondent is not commonly known by the disputed domain names and is not authorised by the Complainant. The disputed domain name is being used to point to a site offering competing retail book services which has been criticized by its customers for making it difficult to access content and to contact customer service or cancel memberships. This is not a bona fide offering of services or a noncommercial legitimate fair use. It is registration and use in opportunistic bad faith causing confusion for commercial gain. While the Complainant suggests that the disputed domain name has been pointed to the same site as the disputed domain name there is no evidence of this in the annexes to the Complaint and does not currently point to an active site. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings Multiple Registrants/Consolidation As articulated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2 where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties and (iii) procedural efficiency. Panels have considered a range of factors as useful to determining whether such consolidation is appropriate including the registrants’ contact information including email addresses, postal addresses and/or phone numbers, including any pattern of irregularities and relevant IP addresses, name servers, or webhosts. Here the registrants of the disputed domain names share the nearly identical email address under the same domain name, the same telephone number, and they are both based in Charlestown, St Kitts and Nevis. They also use the same registrar and name servers. The Panel finds that it is more likely than not that the disputed domain names are subject to common control and it would be procedurally efficient and fair to all parties if the complaint proceeded in respect to both disputed domain names. The registrants will be herein referred to as the “Respondent”. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain names as the Complainant’s mark, being misspelled by substituting the letter “m” in BOOKS-A-MILLION for the letters “tr”, does not prevent such recognition. Nor does omitting the hyphens in the disputed domain name , merely being a matter of punctuation. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 and 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. With reference to the WhoIs details for the disputed domain names the Respondent is not commonly known by the disputed domain names.
page 4 The disputed domain names appear to be intended to be typosquatting registrations with a risk of affiliation with the Complainant. By offering competing book retailing services the website attached to the disputed domain name was confusing. Offering competing services in a confusing manner is not a bona fide offering of goods or services or legitimate noncommercial fair use. Nor is passive holding of a disputed domain name confusingly similar to the distinctive registered mark of a complainant, such as the disputed domain name . Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent uses the disputed domain name for competing retail book services and is not actively using the disputed domain name . The Panel finds that through the disputed domain name , the Respondent has intentionally attempted to attract Internet users looking for the Complainant for commercial gain disrupting the Complainant’s competing business. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name, such as the disputed domain name in this case, would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name , which is likely to be affiliated with the Complainant, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The disputed domain names appear to be intended as typosquatting of the Complainant’s trademark and domain name. Typosquatting is commonly held by Panels to support a finding of bad faith. According to 3.1.4 of the WIPO Overview 3.0, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos[...]) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In the circumstances of this case, the fact that the typosquatting results in a similar numerical dictionary term, appears to be a calculated attempt to falsely suggest affiliation with the Complainant or otherwise take unfair advantage of the Complainant’s reputation. Finally, it appears that the Respondent has been the subject of a large number of previous adverse decisions under the UDRP in proceedings brought against the Respondent by a number of different trademark owners demonstrating a pattern of bad faith activity. WIPO Overview 3.0, section 3.1.2. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 and be transferred to the Complainant. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: September 10, 2025
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