DECISION

 

BoxFox Inc. v. Jon Alden / Sticker Mule

Claim Number: FA2103001936502

 

PARTIES

Complainant is BoxFox Inc. (“Complainant”), represented by Hani Sayed of Rutan & Tucker LLP, California, USA. Respondent is Jon Alden / Sticker Mule (“Respondent”), represented by Salvatore D. Ferlazzo, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <boxfox.com>, registered with eNom, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 12, 2021; the Forum received payment on March 12, 2021.

 

On March 15, 2021, eNom, LLC confirmed by e-mail to the Forum that the <boxfox.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 March 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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@boxfox.com.  Also on March 17, 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.

 

A timely Response was received and determined to be complete on April 6, 2021.

 

On April 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant sells premade and custom gift boxes, and has done so since November of 2014. Complainant has rights in the BOX FOX mark through its registration of the mark with the United States Patent and Trademark Office

(“USPTO”) (e.g., Reg. No. 5,841,987, registered Aug. 27, 2019). See Amend. Compl. Annex F. Complainant also has common law rights in the BOX FOX mark. Respondent’s <boxfox.com> domain name is identical to Complainant’s mark, as Respondent only adds the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.

2.    Respondent has no rights or legitimate interests in the <boxfox.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is inactively holding the disputed domain name. Furthermore, Respondent has marketed the disputed domain name to Complainant with the intention of selling the domain name in a manner that is not protected under the Policy.

3.    Respondent registered and uses the <boxfox.com> domain name in bad faith. Specifically, Respondent had actual knowledge of Complainant’s mark at the time Respondent registered the mark with the intention of selling the disputed domain name to Complainant. Respondent renewed the disputed domain name in bad faith, due to the actual knowledge of Complainant’s mark. Further, Respondent engaged in pre-emptive registration of the disputed domain name after learning of Complainant’s mark.

 

B.   Respondent

1.    Respondent did not have any knowledge of Complainant’s mark at the time of purchasing the <boxfox.com> domain name domain name. Respondent decided to purchase the disputed domain name before Complainant placed orders with Respondent.

 

C.   Complainant’s Additional Submission

1.    Respondent has admitted that it lacks rights and legitimate interest in the disputed domain name. Respondent fails to provide citations for its legal assertions. Respondent failed to address that it is no using the domain name and made not contention of a demonstrable preparation to use the disputed domain name. Respondent’s assertion that it planned to purchase the disputed domain name before April of 2015 is self-serving and the evidence provided cannot be authenticated. Respondent made general offers to sell the disputed domain name, which is still bad faith even if the Respondent doesn’t know who the potential buyer is. Finally, Respondent is a classic example of a cybersquatter.

 

FINDINGS

1.    Respondent’s <boxfox.com> domain name is confusingly similar to Complainant’s BOX FOX mark.

 

2.    Respondent does not have any rights or legitimate interests in the <boxfox.com> domain name.

 

3.    Respondent registered or used the <boxfox.com> domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the BOX FOX mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to show rights in a mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration with the USPTO (e.g., Reg. No. 5,841,987, registered Aug. 27, 2019). See Amend. Compl. Annex F. The Panel therefore finds that Respondent has rights in the mark per Policy ¶ 4(a)(i).

 

Complainant also claims it holds common law rights in the BOX FOX mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant notes the wide spread notoriety, extensive press recognition and continued use of Complainant’s BOX FOX mark as sufficient to establish secondary meaning in the mark. Complainant’s trademark certificates list a first use in commerce date of November 7, 2014. See Amend. Compl. Annex F. The Panel finds that Complainant does hold common law rights in the BOX FOX mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <boxfox.com> domain name is identical to Complainant’s mark, as Respondent only adds the “.com” gTLD to Complainant’s mark. Fully incorporating a complainant’s mark, with the only addition being gTLD, may result in a finding of identity under Policy ¶ 4(a)(i), See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel finds that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <boxfox.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). The Panel notes the WHOIS of record identifies the Respondent as “Jon Alden / Sticker Mule” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Annex A. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <boxfox.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the <boxfox.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is inactively holding the disputed domain name. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to lack any substantive content. See Amend. Compl. Annex N. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Furthermore, Complainant argues Respondent lacks rights and legitimate interest in the <boxfox.com> domain name as Respondent has marketed the disputed domain name to Complainant with the intention of selling the domain name in a manner that is not protected under the Policy. Attempting to sell a disputed domain name to a complainant may not establish rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Trice v. Dill, FA 1369280 (Forum Mar. 10, 2011) (“Based on the evidence in the record, the Panel finds that Respondent’s offer to lease and then sell the<clearbox.com> domain name to Complainant indicates a lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). However, offering a domain name for sale may be appropriate when the value of the disputed domain name is based on the value attached to the generic or descriptive nature of the disputed domain name and not the value of a complainant’s mark. See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while “Allocation” may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany. Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights). Here, Complainant asserts that the BOX FOX mark is unique, distinctive, non-descriptive and non-generic and Respondent offered it to Complainant not due to the generic value of the <boxfox.com> domain name, but because of the connection it has with Complainant’s mark. Complainant provides copies of email communications between Respondent and Complainant regarding the sale of the domain name. See Amend. Compl. Ex. M. Therefore, the Panel finds Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <boxfox.com> domain name in bad faith. Specifically, Respondent registered the disputed domain name with the intention of selling the disputed domain name to Complainant. Registering a disputed domain name with the intention of selling it for a profit may be evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Here, Complainant contends that Respondent knew of Complainant’s BOX FOX mark when the <boxfox.com> domain name was registered, which it subsequently offered to Complainant for large sums of money. See Amend. Compl. Annex J and K. Therefore, the Panel finds Respondent registered and uses the <boxfox.com> domain name in bad faith under Policy ¶ 4(b)(i).

 

Complainant argues Respondent renewed the disputed domain name in bad faith, due to the actual knowledge of Complainant’s mark. Renewing a disputed domain name after obtaining actual knowledge of a complainant’s trademark rights may be evidence of bad faith even if the disputed domain name was originally registered in good faith. See Houlberg Dev. v. Adnet Int’l, FA 95698 (Forum Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith… evidence indicates that Respondent renewed the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who is the owner of the trademark or services mark for valuable consideration.) Here, Complainant contends that Respondent renewed the disputed domain name each time with actual knowledge of Complainant’s mark and did so to continue to offer the domain name for sale. Therefore, the Panel finds Respondent registered and uses the <boxfox.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant also argues Respondent engaged in pre-emptive registration of the <boxfox.com> domain name after learning of Complainant’s mark, which is indicative of bad faith. Registering a disputed domain name in close proximity to learning of a complainant’s mark or changes to a complainant’s business that reflect that mark of business changes may be evidence of bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website); see also Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Here, Complainant contends the disputed domain name clearly is connected with Complainant’s mark, as Respondent removed Complainant’s opportunity to reflect its mark in a domain name. Therefore, the Panel finds Respondent registered and uses the <boxfox.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the BOX FOX mark at the time of registering the <boxfox.com> domain name. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether respondent had actual knowledge of complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent had done business with Complainant prior to acquiring the disputed domain name As such, the Panel determines Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <boxfox.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  April 26, 2021