Pit Barrel Cooker Co., LLC v. Monica Davis
Claim Number: FA2108001959251
Complainant is Pit Barrel Cooker Co., LLC ("Complainant"), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA. Respondent is Monica Davis ("Respondent"), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pitbarrelfactory.store>, registered with 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2021; the Forum received payment on August 12, 2021.
On August 13, 2021, Dynadot, LLC confirmed by email to the Forum that the <pitbarrelfactory.store> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@pitbarrelfactory.store. Also on August 16, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 cancelled.
A. Complainant
Complainant has used PIT BARREL and PIT BARREL COOKER in connection with barbecue and grill products and related products and services since at least as early as 2011. Complainant owns United States trademark registrations for PIT BARREL in standard character and stylized form; for PIT BARREL COOKER in standard character form; and for a design mark consisting of a picture of a barrel accompanied by the words PIT BARREL COOKER CO. in stylized form. Complainant sells its products in online and in retail stores, including through a website that uses the domain name <pitbarrelcooker.com>.
Respondent registered the disputed domain name <pitbarrelfactory.store> via a privacy registration service in July 2021. The domain name is being used for a website that displays Complainant's marks, including the PIT BARREL COOKER CO. design mark, throughout the site. The site purports to offer the same products as those offered on Complainant's website, including cooker and accessory products, using the same product images, but at steeply discounted prices. Complainant has submitted evidence regarding three potential customers who intended to purchase products from Complainant, were confused by Respondent's website and made payments through that site, and never received any products in return. Complainant states that Respondent is not commonly known by the disputed domain name and has not been licensed or otherwise permitted to use Respondent's marks.
Complainant contends on the above grounds that the disputed domain name <pitbarrelfactory.store> is confusingly similar to its PIT BARREL marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <pitbarrelfactory.store> incorporates Complainant's registered PIT BARREL trademark, with the space omitted, adding the generic term "factory" and the ".store" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., NIKE, Inc. & Nike Innovate, C.V. v. Abigailli / CorieBlake / Corie Blake / ElizabethJenkins / Elizabeth Jenkins / LucyFuller / Lucy Fuller / JohnSanders / john Sanders / Richardgourdine / rosetaylor / MarkoKeel / Marko Keel / simonfortier / simon fortier / JustinButler / Justin Butler, FA 1701887 (Forum Dec. 27, 2016) (finding <nikefactoryonline.com>, <nikefactorystore.net>, and other domain names confusingly similar to NIKE); Skechers U.S.A., Inc. II v. Zhong He Yi, FA 1845566 (Forum June 21, 2019) (finding <skechersfactory.store> confusingly similar to SKECHERS, in Uniform Rapid Suspension System proceeding). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to pass off as Complainant and defraud potential customers of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., TXDC, L.P. v. Kevin Americain, FA 1953061 (Forum July 26, 2021) (finding lack of rights or interests where domain name incorporating trademark was used to pass off as complainant and promote competing and likely counterfeit products); Tyco Fire & Security GmbH v. Jean-Claude Van-ess / Van-Ess Dev. Inc, FA 1930767 (Forum Mar. 3, 2021) (finding lack of rights or interests where domain name incorporating trademark was used to pass off as complainant in attempt to defraud consumers into paying for nonexistent services).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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."
Respondent used a privacy registration service to register a domain name obviously intended to create confusion with Complainant and its mark, and is using the domain name to pass off as Complainant and defraud potential customers of Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Chick-fil-A, Inc. & CFA Properties, Inc. v. Lucifer Hawk, FA 1950973 (Forum July 9, 2021) (finding bad faith where domain name registered via privacy registration service was used to pass off as complainant, promoting fraudulent scheme and advertising complainant's competitors); Tyco Fire & Security GmbH v. Jean-Claude Van-ess / Van-Ess Dev. Inc, FA 1930767 (Forum Mar. 3, 2021) (finding bad faith where domain name was used to pass off as complainant in attempt to defraud consumers into paying for nonexistent services). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The remedy that Complainant has requested is cancellation of the disputed domain name. Accordingly, it is Ordered that the <pitbarrelfactory.store> domain name be CANCELLED.
David E. Sorkin, Panelist
Dated: September 20, 2021
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