International Association of Better Business Bureaus, Inc. v. Jonus Ben
Claim Number: FA2102001931965
Complainant is International Association of Better Business Bureaus, Inc. (“Complainant”), represented by Linda Zirkelbach of Venable LLP, District of Columbia, USA. Respondent is Jonus Ben (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebetterblackbusinessbureau.com>, registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2021. The Forum received payment on February 12, 2021.
On February 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thebetterblackbusinessbureau.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 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@thebetterblackbusinessbureau.com. Also on February 16, 2021, 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 March 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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, International Association of Better Business Bureaus, Inc., founded in 1912, is an umbrella organization of Better Business Bureaus in the United States, Canada, and Mexico. Its mission is to promote legitimate advertising and merchandising practices and marketplace trust. Its mark, BETTER BUSINESS BUREAU, was first used in 1927 and was registered with the United States Patent and Trade Office (USPTO) in 1973. The disputed domain name, <thebetterblackbusinessbureau.com>, is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or a legitimate interest in the disputed domain name because Respondent is not commonly known by the disputed domain name and has not received authorization to use Complainant’s BETTER BUSINESS BUREAU mark. Further, Respondent has not used the disputed domain name for a bona fide offering of goods or services because Respondent is currently not making any active use of it. Respondent previously featured an online directory at the website to which the disputed domain name resolved with intent to compete with Complainant’s business.
Respondent registered and uses the disputed domain name in bad faith. Respondent previously disrupted Complainant’s business for commercial gain by offering similar services to those of Complainant. Additionally, Respondent’s current passive holding of the disputed domain name evidences bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in its BETTER BUSINESS BUREAU mark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 and is being used in bad faith.
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 has shown that it has rights in the BETTER BUSINESS BUREAU mark through numerous registrations, including with the USPTO (e.g. Reg. No. 969,847, registered October 2, 1973). The Panel finds the <thebetterblackbusinessbureau.com> domain name to be confusingly similar to Complainant’s mark because it merely adds to that mark the generic words “the” and “black,” which do not sufficiently distinguish the domain name from the mark, as well as the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant has established that its BETTER BUSINESS BUREAU trademark was very well known for many years before Respondent registered the <thebetterblackbusinessbureau.com> domain name on May 25, 2018. In August 2020, it resolved to a website offering services relating to “Online Directories for Any Location, Industry & More!”. Respondent’s Facebook page explained that such services are “designed to promote, market and assist in quality control aspects for Black owned businesses nationwide and locally.” Such services are similar to Complainant’s business information and investigative services. On August 26, 2020 Complainant sent Respondent the first of several cease-and-desist letters by email, to which there was no response. Currently, the disputed domain name resolves to an inactive website stating “The Better Black Business Bureau is coming soon.”
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See 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”).
Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has established this element.
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In light of the circumstances set out in relation to the previous element, the Panel finds that, prior to registering the disputed domain name and using it for a competing website, Respondent was aware of Complainant and its BETTER BUSINESS BUREAU mark. Hence the Panel finds that Respondent registered the disputed domain name in bad faith.
Use of a confusingly similar domain name for a competing website is clearly use in bad faith. 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 fact that, following one or more of Complainant’s cease-and-desist letters, the disputed domain name currently resolves passively to a “coming soon” website, does not alter the conclusion that Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds the circumstances set out in Policy 4(b)(iii) and (iv) to be established and that Respondent registered and is using the <thebetterblackbusinessbureau.com> domain name in bad faith pursuant to Policy 4(a)(iii).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thebetterblackbusinessbureau.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 11, 2021
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