Bonnie & Claus, Inc. v. Imran Rahman
Claim Number: FA2106001952353
Complainant is Bonnie & Claus, Inc. (“Complainant”), represented by David N. Makous, California, USA. Respondent is Imran Rahman (“Respondent”), represented by Chyrkin Dmitriy of Law Office of Dmitriy Chyrkin, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hanascare.com>, registered with NameCheap, Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2021; the Forum received payment on June 23, 2021.
On June 23, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <hanascare.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@hanascare.com. Also on June 29, 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 July 10, 2021.
On July 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is a seller of skin care products under its “Hanacure” brand name. Complainant has rights in the HANACURE trademark through its registration with the United States Patent and Trademark Office (“USPTO”). Complainant also uses the <hanacure.com> domain name to offer its goods.
- The disputed domain name, <hanascare.com>, is confusingly similar to Complainant's HANACURE mark because it incorporates most of the mark. The disputed domain name merely replaces the word “cure” with “care,” adds the letter “s” and includes the “.com” generic top-level domain (“gTLD”), all of which do not create a meaningful distinction with the mark.
- Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Moreover, Respondent is neither using the disputed domain name in connection with a bona fide offering of goods and services nor for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to promote its own cosmetic goods in competition with Complainant and thus diverts internet users away from Complainant’s website.
- Respondent registered and uses the disputed domain name in bad faith. That name is used by Respondent to intentionally divert internet users away from Complainant’s website in order to sell goods in competition with Complainant for commercial gain.
B. Respondent
- The disputed domain name contains the generic terms, “hana” and “scare,” whereas Complainant's mark is composed of “hana” and “cure.” “Scare” and “cure” are distinctive words with completely different meanings. Moreover, “hana” is a name with many origins and is not solely associated with Complainant. Therefore, the disputed domain name is not confusingly similar to Complainant's mark.
- The disputed domain name is comprised of two generic terms. Thus, Respondent has rights and legitimate interests in using the disputed domain name for a variety of generic purposes, such as selling products that correspond to those terms. Respondent does just that in its bona fide offering of advertised products under the “Brilliant” brand name.
- Respondent neither registered nor is using the disputed domain name in bad faith, but is merely engaging in legitimate advertising for sale products that correspond to the generic meaning of the disputed domain name.
- Complainant should be cited for Reverse Domain Hijacking.
Complainant is a company that markets skin care products, including those sold under its HANACURE trademark. That trademark is registered with the USPTO (e.g., Reg. No. 5,151,911, registered Feb. 28, 2017).
Respondent owns the disputed domain name, <hanascare.com>, which was registered on April 30, 2021. The disputed domain name is connected to a website that advertises skin care products competitive with those sold by Complainant.
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.
Complainant has presented the Panel with clear evidence of its USPTO registration for the HANACURE trademark, and thus the Panel finds that Complainant has the necessary rights in that mark to satisfy the base requirement of 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 demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Toyota Motor Sales, U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Forum June 23, 2003).
In the Panel’s view, the disputed domain name, <hanascare.com> is not identical to the HANACURE trademark. However, the differences between the two are relatively minor: “s” is added; and “u” is altered to be “a.” Also, the “.com” gTLD is included, but that is of no moment in comparing the similarity of a domain name to a trademark. Therefore, in reaching its conclusion, the Panel believes that, taken together, the slight aforementioned variations do not prevent a determination that the disputed domain name is confusingly similar to Complainant’s mark. See AB Electrolux v. Jason Wolfe Geagr, D2017-0835 (Wipo June 21, 2017) (finding <elecfrolvx.com> to be confusingly similar to ELECTROLUX); see also Ashley Furniture Industries, Inc. v. Colours Ltd, FA 1559431 (Forum June 20, 2014) (finding <ashleysfurmiture.com> to be confusingly similar to the ASHLEY FURNITURE mark, where “[t]he Panel holds that Respondent’s inclusion of letters or substitution of letters in a term does not differentiate the domain name from the mark under Policy ¶ 4(a)(i)”).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Once Complainant puts forward a prima facie case that Respondent has no rights or legitimate interests in a disputed domain name, Respondent must come forward with evidence that it does possess such rights or interests. 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”); see also 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)).
In this case, Complainant has convinced the Panel that the disputed domain name is confusingly similar to Complainant’s HANACURE trademark, and there is no evidence in the record to suggest that Respondent has ever been commonly known as the disputed domain name. Therefore, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
To counter Complainant’s prima facie case, Respondent contends that the disputed domain name is essentially composed of two generic terms: “hana,” a common given name; and “scare,” a common English language word. As such, argues Respondent, he should be allowed to legitimately use the disputed domain name for displays that correspond to the meaning of those generic terms. Even if the Panel were to concede Respondent’s basic proposition, i.e., the legitimate use of a generic domain name for the display of corresponding material, Respondent’s use of the disputed domain name fails to conform to that proposition. Respondent uses the disputed domain name for a website that advertises sale skin care products, which in no way corresponds to the meaning of the word “scare.” As a result, the Panel rejects Respondent’s contentions and arguments that seek to rebut Complainant’s prima facie case.
Moreover, Respondent’s use of the disputed domain name corresponds directly to Complainant’s line of business, the sale of skin care products. In accord with many previous UDRP cases, the Panel finds that the use of a disputed domain name that is confusingly similar to a valid trademark to market products that compete directly with those sold by that trademark’s owner constitutes neither a bona fide offering of goods and services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“...use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Talx Corporation v. Husam Abboud, D2007-0186 (Wipo Apr. 11, 2007) (“Where, as in this case, the domain name in issue resolves to a website which links to sites offering services which compete directly with those offered by the Complainant under its TALX trademark, it is powerful evidence that such use of that domain name is neither a bona fide offering of services nor a legitimate or fair use.”).
Accordingly, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Per Policy ¶ 4(b)(iv), bad faith registration and use of the disputed domain name may be found by the Panel if it determines that:
by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to your web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.
In this case, the Panel concludes that Respondent’s intentional use of the disputed domain name, confusingly similar to Complainant’s trademark, for a website that advertises for sale, and thus Respondent’s commercial gain, items that are very similar to goods offered by Complainant fits neatly within the bad faith parameter outlined in Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also CNA Financial Corporation v. William Thomson / CNA Insurance, FA 1541484 (Forum Feb. 28, 2014) (“Respondent intentionally attempted to create a likelihood of confusion with Complainant. Respondent offers competing insurance services via the disputed domain name, and any resulting sales allow Respondent to profit from improper association [...] This is bad faith under Policy ¶ 4(b)(iv).”).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
Reverse Domain Name Hijacking
Given that the Complainant has met its burden of proof under all three parts of Policy ¶ 4(a) 1-3, the Respondent’s contention of Reverse Domain Name Hijacking is groundless.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hanascare.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: July 29, 2021
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