Backcountry.com, LLC v. Ryeub Uhfry
Claim Number: FA2205001997301
Complainant is Backcountry.com, LLC (“Complainant”), represented by Craig A. Beaker of Holland & Hart LLP, Colorado, USA. Respondent is Ryeub Uhfry (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopbackcountry.com>, registered with Name.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2022; the Forum received payment on May 20, 2022.
On May 22, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <shopbackcountry.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 May 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2022 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@shopbackcountry.com. Also on May 25, 2022, 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 June 20, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BACKCOUNTRY mark established by its long and extensive use of its registered trademarks as described below and submits that the disputed domain name <shopbackcountry.com> is identical or at the very least confusingly similar to Complainant’s BACKCOUNTRY mark, because the disputed domain name wholly incorporates the term BACKCOUNTRY, merely adding the generic term “shop” and the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant argues that the addition of a generic or descriptive term like “shop” is insufficient to distinguish the disputed domain name from Complainant’s mark, as the term “shop” clearly refers to Complainant’s online retail store services. See Bloomberg Fin. L.P. v. Nexperian Holding Ltd., 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.”).
Furthermore, Complainant contends that the addition of the gTLD extension <.com> is also irrelevant for purposes of ascertaining confusing similarity. See Anheuser-Busch, Inc. v. FIG Vietnam c/o Domain Admin, FA 1190330 (Forum Jun. 25, 2008) (finding the “addition of a generic top-level domain such as ‘.com’ is irrelevant when determining if the disputed domain name is confusingly similar to [the complainant’s] mark”).
Complainant next submits that Respondent has no rights and legitimate interests in the disputed domain name because there is also no evidence that Respondent was commonly known by the disputed domain name prior to its registration. The published WhoIs records identify “WhoIs Agent” as the registrant for the disputed domain name, an unknown entity that has no relationship or affiliation with Complainant whatsoever. See Chevron Intellectual Prop. LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that respondent was not commonly known by the <chevron-europe.com> domain name, as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name)
Complainant adds that Respondent is not affiliated with Complainant in any way.
Complainant in particular asserts that it has not given Respondent permission to use the BACKCOUNTRY mark and argues that this lack of consent supports a finding that Respondent has no legitimate interests in the disputed domain name. See 7-Eleven, Inc. v. Metodi Darzev / Tool Domains Ltd, FA 1910817 (Forum Oct. 1, 2020) (“In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name.”).
Complainant further argues that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name.
Complainant refers to screen captures of the website to which the disputed domain name resolves which are annexed to the Complaint and submits that these show that Respondent is attempting to pass himself off as Complainant.
The screen captures show that Respondent is using Complainant’s BACKCOUNTRY mark as well as images and content from Complainant’s website located at <www.backcountry.com>. Complainant submits that “[u]se of a domain name to pass itself off as a complainant in order to sell competing goods is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).” Caterpillar Inc. v. Carlos Remy, FA 1825645 (Forum Feb. 18, 2019); See also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (finding no rights or legitimate interests where respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
As reflected by the first use dates in Complainant’s trademark registrations, Complainant first began using and developing rights in the BACKCOUNTRY mark in the United States at least as early as 1996, approximately 25 years prior to Respondent’s registration of the disputed domain name. Complainant contends that Respondent’s use of the disputed domain name and copying of Complainant’s website and registered marks indicates that Respondent was not only aware of Complainant’s strong trademark rights, but that Respondent attempted to benefit from Complainant’s goodwill associated with the BACKCOUNTRY mark. Previous panels have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possessed trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of <providencejournal.com> demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant adds that Respondent’s website appears to provide fraudulent contact information, as the business address listed on the “Contact Us” page and links to various social media pages on Facebook, Instagram, and Twitter, on the website do not appear to exist at all. In this regard Complainant has provided a screen captures in an annex to the Complaint.
Complainant next argues that the evidence overwhelmingly supports the conclusion that Respondent registered and is using the disputed domain name in bad faith arguing that Respondent had actual knowledge of Complainant’s rights in the BACKCOUNTRY mark prior to registering the disputed domain name.
Complainant submits that since 2018, its sales of BACKCOUNTRY-branded products and third-party products sold via the website <www.backcountry.com> and its retail stores have generated more than $1.5 billion in sales. Further, since 2018, Complainant has spent over $230 million in advertising and marketing expenditures for BACKCOUNTRY-branded products and third-party products sold via the website www.backcountry.com, that has recorded over two billion unique visitors since 2016.
Complainant contends that it is not a coincidence that Respondent registered the disputed domain name that is confusingly similar to Complainant’s well-known BACKCOUNTRY mark and then created a website that incorporates Complainant’s registered marks and purports to sell Complainant’s own BACKCOUNTRY-branded products.
Complainant submits that Respondent’s actions indicate that it knew of Complainant’s rights and intended to pass itself off as Complainant in an effort to confuse consumers which constitutes bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant adds that Respondent uses the disputed domain name and associated website to pass itself off as Complainant. In particular, Respondent’s website closely mirrors Complainant’s website <www.backcountry.com> and prominently features Complainant’s registered BACKCOUNTRY mark.
Respondent’s website also advertises Complainant’s own products for sale, copying Complainant’s copyrighted images, product descriptions, and other proprietary content as shown in the screen captures of the website exhibited with the Complaint. It is well established such use of a domain name for passing off constitutes bad faith. See Kohler Co. v. jinnan ye / beijing celijie keji youxiangongsi, FA 1679954 (Forum Aug. 5, 2016) (finding bad faith where respondent’s website displayed complainant’s trademarks and copyrighted images of complainant’s products without authorization, in an attempt to pass itself off as complainant).
Complainant submits that Respondent is using the disputed domain name in its website address to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant similarly constitutes bad faith. Policy ¶ 4(b)(iv); see also 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).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and uses its BACKCOUNTRY mark in connection with a wide variety of goods and services in the apparel and outdoor recreation industries and is the owner of the following portfolio of registered trademarks:
· United States service mark BACKCOUNTRY registration number 4788204, registered on the Principal Register on August 11, 2015 for services in international class 35;
· United States trademark BACKCOUNTRY registration number 5164389 registered on the Principal Register on March 21, 2017 for goods in international class 20;
· United States trademark BACKCOUNTRY registration number 6269114 registered on the Principal Register on February 16, 2021 for goods in international class 9;
· United States trademark BACKCOUNTRY registration number 6502681 registered on the Principal Register on September 28, 2021for goods in international classes 12 and 28;
· United States service mark BACKCOUNTRY (and device) registration number 3243545 registered on the Principal Register on May 22, 2007 for services in international class 35;
· United States service mark BACKCOUNTRY (and device) registration number)5522844 registered on the Principal Register on July 24, 2018 for services in international classes 35 and 39;
Complainant has also claimed rights in a number of United Kingdom registered trade marks and European Union Trade Marks but has provided no evidence to support these claims.
Complainant has an established Internet presence and maintains a website at the website <www.backcountry.com> .
The disputed domain name was registered on April 6, 2022 and resolves to a website that contains content taken from Complainant’s website without consent and which purports to present a false contact address.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar to the Forum in response to the Forum’s request for details of the registration of the disputed domain name in the course of this proceeding.
Respondent has availed of a privacy service to conceal its identity and the Registrar has confirmed to the Forum that Respondent is the registrant of the disputed domain name.
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 Complainant has provided convincing uncontested evidence that it has rights in the BACKCOUNTRY mark, established by its ownership of the registrations described above and extensive use of the mark in its sales of apparel and outdoor recreational goods including on its website at <www.backcountry.com>.
The disputed domain name <shopbackcountry.com> is composed of the Complainant’s BACKCOUNTRY mark in entirety, preceded by the element “shop” and followed by the gTLD extension <.com>.
Complainant’s BACKCOUNTRY mark is the dominant and only distinctive element in the disputed domain name.
The elements the element “shop” is a generic and descriptive of retail services, adding nothing that prevents a finding of confusing similarity between the disputed domain name and Complainant’s mark.
Neither does the gTLD extension <.com> prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the BACKCOUNTRY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is also no evidence that Respondent was commonly known by the disputed domain name prior to its registration;
· the WhoIs records identify “Whois Agent” as the registrant of the disputed domain name, an unknown entity that has no relationship or affiliation with Complainant whatsoever;
· Respondent is not affiliated with Complainant in any way;
· Complainant has not given Respondent permission to use the BACKCOUNTRY mark and this lack of consent supports a finding that Respondent has no legitimate interests in the disputed domain name;
· Respondent’s actions are not a bona fide offering of goods or services;
· Respondent is not engaged in a legitimate noncommercial or fair use of the disputed domain name;
· screen captures of the website to which the disputed domain name resolves which are annexed to the Complaint show that Respondent is attempting to pass itself off as Complainant;
· in particular the screen captures show that Respondent is using Complainant’s BACKCOUNTRY mark as well as images and content from Complainant’s website located at www.backcountry.com which cannot create rights or legitimate interests in the disputed domain name which is nearly identical to the complainant’s website);
· as reflected by the first use dates in Complainant’s trademark registrations, Complainant first began using and developing rights in the BACKCOUNTRY mark in the United States at least as early as 1996, approximately 25 years prior to Respondent’s registration of the disputed domain name and therefore Respondent’s use of the disputed domain name and copying of Complainant’s website and registered marks indicates that Respondent was not only aware of Complainant’s strong trademark rights, but also that Respondent attempted to benefit from Complainant’s goodwill associated with the BACKCOUNTRY mark.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has long and extensive reputation and goodwill in the BACKCOUNTRY mark and that that it has acquired a high degree of recognition in the marketplace. Respondent on the other hand has no rights or legitimate interests in the disputed domain name which incorporates the BACKCOUNTRY mark in its entirety as its dominant and only distinctive element.
Since 2018, sales by Complainant of its BACKCOUNTRY-branded products and third-party products sold via its website at <www.backcountry.com> and in its retail stores have amounted to more than $1.5 billion in sales and Complainant’s the website at <www.backcountry.com> has recorded over two billion unique visitors since 2016.
This Panel accepts Complainants submission that it is no coincidence that the disputed domain name that is confusingly similar to Complainant’s well-known BACKCOUNTRY mark was chosen and registered.
There is no suggestion anywhere in the evidence that the disputed domain name may have been registered for any reason other than to create an association with Complainant’s goodwill and reputation in the BACKCOUNTRY mark and all the evidence points to a finding that the disputed domain name was chosen and registered with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the mark.
The uncontested evidence, specifically the screen captures annexed to the Complaint, show that Respondent is using the disputed domain name in bad faith as a website address to attract, confuse and lure unsuspecting Internet users, seeking Complainant’s website, to its own website which has no association whatsoever with Complainant.
Furthermore, this Panel is fortified in making this decision by the fact that Respondent has availed of a privacy service to conceal its identity, has not responded to the Complaint and it appears that it has provided false contact details on the website to which the disputed domain name resolves.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopbackcountry.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 21, 2022
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