Hobby Lobby Stores, Inc. v. Marie Jacobson
Claim Number: FA2108001960334
Complainant is Hobby Lobby Stores, Inc. (“Complainant”), represented by Clint B. Sloan of Hobby Lobby Stores, Inc., Oklahoma, USA. Respondent is Marie Jacobson (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hobbylobbyhr.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2021; the Forum received payment on August 19, 2021.
On August 19, 2021, Google LLC confirmed by e-mail to the Forum that the <hobbylobbyhr.com> domain name is registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@hobbylobbyhr.com. Also on August 20, 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 September 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Hobby Lobby Stores, Inc., is a large retailer in the field of arts and crafts.
Complainant maintains registration in its HOBBY LOBBY mark with the United States Patent and Trademark Office (USPTO).
The at-issue domain name, <hobbylobbyhr.com>, is identical or confusingly similar to Complainant’s HOBBY LOBBY mark because it wholly incorporates Complainant’s HOBBY LOBBY mark while adding in the term “hr” and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interest in the <hobbylobbyhr.com> domain name because Respondent registered a domain name using a mark Complainant has exclusive rights in.
Respondent registered and uses the <hobbylobbyhr.com> domain name in bad faith because circumstances indicate that Respondent is selling the <hobbylobbyhr.com> domain name. Respondent is using the <hobbylobbyhr.com> domain name to attract internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in its HOBBY LOBBY mark.
Respondent has not been authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in HOBBY LOBBY.
Respondent currently holds the at-issue domain name passively.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its HOBBY LOBBY mark establishes Complainant’s rights in such mark for the purposes 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 demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The at-issue domain name contains Complainant’s HOBBY LOBBY trademark less its space, followed by the suggestive characters “hr” (Human Resources) and with all followed by the “.com” top-level domain name. The differences between the <hobbylobbyhr.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that the <hobbylobbyhr.com> domain name is confusingly similar to Complainant’s HOBBY LOBBY mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. Notably, Complainant asserts that Complainant has exclusive rights over the HOBBY LOBBY trademark. See Int'l Olympic Comm. v. Ritchey, FA 128817 (Forum Jan. 20, 2003) (finding that the Olympic Amateur Sports Act, granting the complainant exclusive rights in the Olympic symbol and the word Olympic, preempts any chance for the respondent to claim rights or legitimate interests in an infringing domain name).
The WHOIS information for <hobbylobbyhr.com> indicates that “Marie Jacobson” is the domain name’s registrant. Further, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <hobbylobbyhr.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant’s doesn’t present evidence showing how Respondent uses <hobbylobbyhr.com>, although it speculates that Respondent may have registered the domain name to offer it for sale. In any event, it appears that the domain name is held passively as browsing to <hobbylobbyhr.com> returns an empty webpage. Passively holding the domain name is not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(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).”); see also, Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012) (finding that inactive use, or “passive holding,” of the disputed domain name by a respondent permits the inference that the respondent lacks rights and legitimate interests in the domain names).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <hobbylobbyhr.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant claims that “circumstances indicate that Respondent registered [the at-issue domain name] primarily” to offer it for sale pursuant to Policy ¶ 4(b)(i). However, Complainant fails to disclose any particular circumstances supporting its conclusion. Instead, Complainant simply points to the fact that the domain name contains Complainant’s HOBBY LOBBY trademark as a basis for its claim that Respondent is, or intends to, offer the domain name for sale and is thus acting in bad faith under Policy ¶ 4(b)(i). By not proffering specific evidence, Complainant fails to meet the necessary burden of proof to support a finding of bad faith pursuant to Policy ¶ 4(b)(i). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”).
As mentioned elsewhere and although not expressly argued by Complainant, Respondent appears to hold the at issue domain name passively. Respondent’s passive holding of the <hobbylobbyhr.com> domain name indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also, Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Additionally, Respondent registered the confusingly similar <hobbylobbyhr.com> domain to create confusion among internet users as to the domain name’s association with, or sponsorship by, Complainant. Respondent’s use of the trademark laden at-issue domain name to create a likelihood of confusion between its domain name and Complainant’s related trademark shows Respondent’s bad faith under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”);
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hobbylobbyhr.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 15, 2021
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