Boston Green Goods, Inc. v. inc, imwave
Claim Number: FA0806001199233
Complainant is Boston Green Goods Inc. (“Complainant”), represented by Michael
R. Scott, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <allergybueyrsclub.com> and <allergybuyesclub.com>, registered with Moniker Online Services, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 4, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@allergybueyrsclub.com and postmaster@allergybuyesclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <allergybueyrsclub.com> and <allergybuyesclub.com> domain names are confusingly similar to Complainant’s ALLERGY BUYERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <allergybueyrsclub.com> and <allergybuyesclub.com> domain names.
3. Respondent registered and used the <allergybueyrsclub.com> and <allergybuyesclub.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a retailer of home health products and allergy relief products which it promotes under the ALLERGY BUYERS CLUB mark, and on the <allergybuyersclub.com> website. Complainant alleges that it registered the ALLERGYBUYERSCLUB.COM mark with the United States Patent and Trademark Office (“USPTO”) on July 1, 2008 (alleged Reg. No. 3,456,445 filed April 13, 2007), but has not actually shown any proof in the record of such registration, such as a printout copy of the USPTO registration displaying the registration date and number for the ALLERGYBUYERSCLUB.COM mark. However, Complainant also claims common law rights in the ALLERGY BUYERS CLUB mark, and over the last ten years, while using the ALLERGY BUYERS CLUB to market its products, Complainant has generated tens of millions of dollars worth of retail sales from tens of thousands of online customers.
Respondent registered the <allergybueyrsclub.com>
and <allergybuyesclub.com>
domain names on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 used the ALLERGY BUYERS CLUB mark to promote
and sell its products to over tens of thousands of customers over the last ten
years. The Panel finds that Complainant
has established common law rights in the ALLERGY BUYERS CLUB mark for purposes
of Policy ¶ 4(a)(i) through its continuous use of the mark in commerce since at
least 1998. See Keppel TatLee Bank v.
Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and
substantial use of [KEPPEL BANK] in connection with its banking business, it
has acquired rights under the common law.”); see also Bibbero Sys., Inc.
v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (complainant
had common law rights in the BIBBERO
mark because it had developed brand name recognition with the word “bibbero”).
Complainant contends that
Respondent’s <allergybueyrsclub.com> domain name is confusingly similar to its ALLERGY
BUYERS CLUB mark.
The <allergybueyrsclub.com>
domain name differs from Complainant’s
mark in three ways: (1) the letters “y” and “e” have been transposed in the
term “buyers”; (2) the spaces between the words have been removed; and (3) the
generic top-level domain (“gTLD”) “.com” has been added. The transposition of two letters does not
sufficiently distinguish a domain name from an incorporated mark for the
purposes of Policy ¶ 4(a)(i), nor does the removal of the space between words. See Google
Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to the complainant’s GOOGLE mark
and noting that “[t]he transposition of two letters does not create a distinct
mark capable of overcoming a claim of confusing similarity, as the result
reflects a very probable typographical error”); see also Buffalo News
v. Barry, FA 146919 (Nat. Arb. Forum
Complainant further contends that
Respondent’s <allergybuyesclub.com> domain name is confusingly similar to its ALLERGY
BUYERS CLUB mark.
The <allergybuyesclub.com>
domain name differs from Complainant’s
mark in three ways: (1) the letter “r” has been removed from the term “buyers”;
(2) the spaces between the words have been removed; and (3) the generic
top-level domain (“gTLD”) “.com” has been added. The removal of a letter does not sufficiently
distinguish a domain name from an incorporated mark for the purposes of Policy
¶ 4(a)(i), nor does the removal of the space between words. See Reuters Ltd. v. Global Net
2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name
which differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly distinctive);
see also Down E. Enter. Inc. v.
Countywide Communications, FA 96613 (Nat. Arb. Forum
Therefore, the Panel finds the changes made in the two disputed domain names do not minimize or eliminate the resulting likelihood of confusion, and that Respondent’s disputed domain names are not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights
or legitimate interests in the <allergybueyrsclub.com>
and
<allergybuyesclub.com> domain names. Complainant must present a prima facie case to support these
allegations before the burden shifts to Respondent to prove it does have rights
or legitimate interests in the disputed domain name. The Panel finds Complainant has presented a
sufficient prima facie case to
support its assertions and Respondent has failed to respond to these
proceedings. Therefore, the Panel may
conclude Respondent does not possess rights or legitimate interests in the
disputed domain name. The Panel,
however, will examine the record and determine if Respondent possesses rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide “concrete evidence that it has rights to or
legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb.
Forum
Complainant contends that Respondent is not commonly known
by the <allergybueyrsclub.com> and
<allergybuyesclub.com> domain names nor has it ever been the
owner or licensee of the ALLERGY BUYERS CLUB mark. The WHOIS record for the disputed domain name
lists Respondent as “inc, imwave.” This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known by
the <allergybueyrsclub.com> and
<allergybuyesclub.com> domain names pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also America W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The disputed domain names formerly redirected to a
website offering links to numerous websites advertising businesses that compete
with Complainant. The Panel finds that this use of the disputed domain names
was neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services).
Respondent also offered to sell the <allergybueyrsclub.com> domain name to Complainant for $1,300. With respect to the <allergybueyrsclub.com> domain name, the Panel finds that Respondent’s offer to sell is evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the <allergybueyrsclub.com> domain name to Complainant for $1,300. With respect to the <allergybueyrsclub.com>
domain name, the Panel finds that this offer to sell is evidence of
Respondent’s use and registration in bad faith pursuant to Policy ¶
4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum
Complainant contends that Respondent was using the disputed
domain names to divert Internet customers from Complainant’s website to Respondent’s
website that resolved from the disputed domain names. Respondent was accomplishing this through the
confusion caused by the similarity between the ALLERGY BUYERS CLUB mark and the disputed domain names. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to a
website competing with Complainant’s business.
The Panel finds that Respondent’s use of the disputed domain name has
disrupted Complainant’s business, and is evidence of registration and use in
bad faith pursuant to Policy ¶ 4(b)(iii).
See Travant Solutions, Inc. v. Cole, FA
203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the
domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is
operating on behalf of a competitor of Complainant . . .”); see also SR Motorsports v. Rotary Performance, FA
95859 (Nat. Arb. Forum
Complainant also contends that Respondent was gaining
commercially because of this diversion, through the competing services that were
offered at Respondent’s website that resolved from the disputed domain names. The Panel finds that this was an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this
use was also evidence of registration and use in bad faith. See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allergybueyrsclub.com> and <allergybuyesclub.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated:
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