Bestway Inflatables & Material Corp. v. S Jon Grant
Claim Number: FA2008001908247
Complainant is Bestway Inflatables & Material Corp. (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is S Jon Grant (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us>, registered with Dynadot, Llc, Dynadot Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2020; the Forum received payment on August 13, 2020.
On August 14, 2020; August 18, 2020, Dynadot, Llc, Dynadot Llc confirmed by e-mail to the Forum that the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names are registered with Dynadot, Llc, Dynadot Llc and that Respondent is the current registrant of the names. Dynadot, Llc, Dynadot Llc has verified that Respondent is bound by the Dynadot, Llc, Dynadot Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bestwaycrop.us, postmaster@beswaycorp.us, postmaster@bestwsycorp.us. Also, on August 27, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant does business from everything from inflatable leisure products, water sports products, to above ground pools and outdoor camping gear. Complainant has rights in the BESTWAY mark through its registration with the United States Patent and Copyright Office (“USPTO”) (e.g. Reg. No. 2,748,177, Registered Aug. 5, 2003). Respondent’s <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names are confusingly similar to Complainant’s mark. Respondent incorporates the mark in its entirety and either misspells the mark or adds an additional generic word along with the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the BESTWAY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to webpages that offer pay-per-click links to unrelated third parties.
Respondent registered and used the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names in bad faith as Respondent attempts to confuse internet users by resolving to a domain name that provides links and products related to Complainant’s BESTWAY mark. Respondent had actual knowledge of Complainant’s rights in the BESTWAY mark prior to the registration of the disputed domain names. Respondent has engaged in a pattern of bad faith through prior UDRP decisions that resulted in the transfer of domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bestway Inflatables & Material Corp. (“Complainant”), of Shanghai, China. Complainant is the owner of numerous USA trademark registrations for the mark BESTWAY and variations thereof comprising the family of Bestway marks. Complainant has continuously used the BESTWAY mark since at least as early as 2003 in connection with its provision of more than 1,000 products in the lines of above-ground pools and portable spas, as well as recreation and sporting goods, and camping equipment.
Respondent is S Jon Grant (“Respondent”), of Las Vegas, NV, USA. Respondent’s registrar’s address is listed as San Mateo, CA, USA. The Panel notes that the <bestwaycrop.us> domain name was registered on or about June 11, 2020, the <beswaycorp.us> domain name on or about June 21, 2020, and the <bestwsycorp.us> domain name was registered on or about August 9, 2020.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the BESTWAY mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the BESTWAY mark (e.g. Reg. No. 2,748,177, registered Aug. 5, 2003). The Panel here finds that Complainant has shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names are confusingly similar to Complainant’s mark. Registration of a domain name that contains a mark in its entirety even if misspelled or contains an additional generic term along with a gTLD or ccTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”) see also Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”), see also Transamerica Corporation v. Whois Foundation, FA 1700616 (Forum Dec. 5, 2016) (“For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that ccTLDs can generally be disregarded”). Here, Complainant argues that Respondent incorporates the mark in its entirety and either misspells the mark or adds an additional generic word along with the “.us” ccTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the BESTWAY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here the WHOIS information for the disputed domain name lists the registrant as “S Jon Grant” and there is no other evidence to suggest that Respondent was authorized to use the BESTWAY mark or was commonly known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to resolve to webpages that offer pay-per-click links to unrelated third parties. Use of a disputed domain name to resolve to a webpage that offers pay-per-click links to products and services that are related or unrelated to a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel with screenshots of Respondent’s <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names’ resolving webpages that show links to products such as “Spa Pool” and “Pool Products” and services unrelated to Complainant’s business like “industrial Products.” The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent has engaged in a pattern of bad faith through prior UDRP decisions that resulted in the transfer of domain names. Prior UDRP decisions that have result in the transfer of a domain name may be evidence of a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant has provided the Panel with previous UDRP decisions that involved Respondent. The Panel here finds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and used the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names in bad faith as Respondent attempts to confuse internet users by resolving to a domain name that provides links and products related to Complainant’s BESTWAY mark. Use of a disputed domain name that resolves to a webpage that offers links related and unrelated to a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”), see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Here, Complainant has provided the Panel with screenshots of Respondent’s <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names’ resolving webpages that show links to products such as “Spa Pool” and “Pool Products” and services unrelated to Complainant’s business like ”Industrial Products.” The Panel here finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the BESTWAY mark at the time of registering the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names. To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which further supports the conclusion that Respondent registered and used the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bestwaycrop.us>, <beswaycorp.us>, and <bestwsycorp.us> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 6, 2020
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