Pit Barrel Cooker Co., LLC v. Nitsch Weiser / Francone Lli
Claim Number: FA2109001966561
Complainant is Pit Barrel Cooker Co., LLC (“Complainant”), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA. Respondent is Nitsch Weiser / Francone Lli (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2021; the Forum received payment on September 27, 2021.
On September 28, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. 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 September 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@pitbarrel-outlet.store, postmaster@pitbarrel-outlet.shop, postmaster@pitbarrel-clearance.shop. Also on September 30, 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 October 24, 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 names be Cancelled.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute address websites that are identical to each other and to websites associated with domain names in previous UDRP disputes between the parties. The domain names and their associated websites have been used to purportedly sell Complainant’s products and contribute to confusion as to the domain names, and addressed websites’, association with Complainant.
While the underlying registrants may or may not differ nominally, they clearly appear to be related to, or controlled by, the same person, persons, or entity. Moreover, Complainant’s claim that the domain names’ registrants should be effectively treated as a single entity in the instant proceeding is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding and will collectively refer to the nominal respondents as Respondent herein.
A. Complainant
Complainant contends as follows:
Complainant, Pit Barrel Cooker Co., LLC, is the owner of the PIT BARREL mark, which is used in association with barbeque and grill products and accessories.
Complainant maintains registration of its PIT BARREL mark with the United States Patent and Trademark Office (USPTO).
The at-issue domain names, <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop>, are identical or confusingly similar to Complainant’s PIT BARREL mark as they incorporate Complainant’s PIT BARREL mark while adding in a hyphen and the term “outlet” or “clearance” and the “.shop” or “.store” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, or <pitbarrel-clearance.shop> domain names because Respondent is not commonly known by the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, or <pitbarrel-clearance.shop> domain names nor has Respondent been authorized to use Complainant’s PIT BARREL mark. Respondent is not using the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, or <pitbarrel-clearance.shop> domain names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent are using the domain names to obtain payment from users who are under the false impression that they are buying Complainant’s products.
Respondent registered and uses the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names in bad faith because Respondent engaged in previous activity of bad faith registration and use. Bad faith is further found through Respondent’s current activities which disrupt Complainant’s business and by Respondent’s fraudulent offering of Complainant’s products for sale and its attempt to confuse internet users as to the affiliation between Complainant and the at-issue domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PIT BARREL trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the PIT BARREL trademark.
Respondent uses the at-issue domain names to address website(s) that mimic one of Complainant’s genuine websites and purports to offer Complainant’s products for sale at a discount.
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 names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has one of more USPTO trademark registrations for its PIT BARREL trademark. A USPTO registration is sufficient to demonstrate Complainant’s rights in a mark under 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).”).
Respondent’s <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names each contain Complainant’s PIT BARREL trademark, less its domain name impermissible space, followed by a hyphen and the generic term ‑either “outlet” or “clearance.” Each domain name concludes with the top-level domain name “.store” or “.shop.” The differences between any of Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any at-issue domain name from Complainant’s PIT BARREL mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names are each confusingly similar to Complainant’s PIT BARREL mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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).
Here, Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 any at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
WHOIS information for the at-issue domain names does not identify any the nominal registrants as being similar to any of the domain names; and the record before the Panel contains no evidence that tends to prove that any nominal registrant is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, or <pitbarrel-clearance.shop> for the purposes of 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).
Respondent’s <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names are each used to facilitate Respondent’s fraudulent sale of Complainant’s products via website(s) addressed by the at-issue domain names. Notably, Respondent constructed the relevant website(s) to replicate the look and feel of Complainant’s genuine <pitbarrelcooker.com> website and such look-alike website(s) purportedly allow the online ordering of Complainant’s products at a substantial discount which is suggestive of the “outlet” and “clearance” terms found in each at-issue domain name. Respondent’s use of the at-issue domain names in this manner constitutes neither a bona fide offering of goods or services nor legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent has previously suffered adverse UDRP findings and has been found to have acted in bad faith concerning Complainant’s at-issue trademark. Respondent’s is relentless in its pursuit of fraud for soon after being divested of an offending domain name Respondent simply registers a new confusingly similar domain name and points it to the same bogus website as before. See e.g. Pit Barrel Cooker Co., LLC v. Bricklina Mandy, FA2108001961122 (Forum Sept. 27, 2021). Previous actions against Respondent by Complainant concern <pitbarrelfactory.store> and <pitbarrel-factory.store> and the website(s) addressed by those domain names are identical to the website(s) addressed by the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names. The fact patterns in the prior disputes are near identical to that of the instant dispute. In the instant dispute Respondent has registered multiple domain names that are confusingly similar to Complainant’s PIT BARREL mark. Respondent’s prior bad faith registration and use of domain names that are confusingly similar to Complainant’s mark shows a pattern of domain name abuse and thereby indicates Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Additionally, Respondent’s use of the at-issue domain names disrupts Complainant’s business by facilitating Respondent to engage in unfair competition while confusing internet users as to the sponsorship of the at-issue domain names and their website(s). Respondent’s use of <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> in this way further shows Respondent registered and used the at-issue domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Caterpillar Inc. v. Vine, FA 97097 (Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pitbarrel-outlet.store>, <pitbarrel-outlet.shop>, and <pitbarrel-clearance.shop> domain names be CANCELLED.
Paul M. DeCicco, Panelist
Dated: October 25, 2021
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