Bondi Icebergs Inc. d/b/a Bondi Bathers v. Kerry Morrison / MORDAW
Claim Number: FA1505001618395
Complainant is Bondi Icebergs Inc. d/b/a Bondi Bathers (“Complainant”), represented by Peter E. Nussbaum of Chiesa Shahinian & Giantomasi PC, New Jersey, USA. Respondent is Kerry Morrison / MORDAW (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bondibather.com>, registered with CRAZY DOMAINS FZ-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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2015; the Forum received payment on May 7, 2015.
On May 10, 2015, CRAZY DOMAINS FZ-LLC confirmed by e-mail to the Forum that the <bondibather.com> domain name is registered with CRAZY DOMAINS FZ-LLC and that Respondent is the current registrant of the name. CRAZY DOMAINS FZ-LLC has verified that Respondent is bound by the CRAZY DOMAINS FZ-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 May 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2015 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@bondibather.com. Also on May 13, 2015, 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 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant has rights in the BONDI BATHERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,298,581, registered December 7, 1999). Respondent’s <bondibather.com> domain name is confusingly similar to Complainant’s BONDI BATHERS mark because it is differentiated only by the removal of the letter ‘s’ and the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name as the WHOIS information lists “KERRY MORRISON” as Registrant. Respondent has not submitted any further evidence to indicate that it is commonly known by the disputed domain. Respondent lacks rights and interests in the disputed domain name. The disputed domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to compete with Complainant. Respondent created the <bondibather.com> domain name in order take advantage of a common typographical error to attract Internet users.
Respondent uses the domain name for the purpose of disrupting Complainant’s business. Respondent registered the domain in order to attract confused Internet users to its resolving website for commercial gain. Respondent registered the domain name with actual knowledge of Complainant’s rights in the BONDI BATHERS mark. Respondent’s registration of the <bondibather.com> domain name constitutes typosquatting.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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.”).
Complainant owns and operates a line of swimwear and bathing suits for women. Complainant has rights in the BONDI BATHERS mark through its registration with the USPTO (Reg. No. 2,298,581, registered December 7, 1999). Past panels have found registration with the USPTO sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has demonstrated its rights in the BONDI BATHERS mark.
Complainant argues that Respondent’s <bondibather.com> domain name is confusingly similar to Complainant’s BONDI BATHERS mark because it is differentiated only by the removal of the letter ‘s’ and the addition of the gTLD “.com.” Past panels have found the inclusion of “.com” irrelevant to Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Past panels have also found that the removal of the letter ‘s’ from a mark is not enough to differentiate a domain name under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Therefore, the Panel finds that Respondent’s <bondibather.com> domain name is confusingly similar to Complainant’s BONDI BATHERS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “KERRY MORRISON” as Registrant, and Respondent has not submitted any further evidence to indicate that it is commonly known by the disputed domain name. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant claims that Respondent has failed to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to compete with Complainant. Complainant claims that Respondent operates the <bondibather.com> domain name in order to sell substantially similar products to those sold by Complainant. Past panels have found that the use of a complainant’s mark to compete with that complainant is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel finds that Respondent’s use of the disputed domain name is competing with Complainant’s business and such use is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant claims that Respondent attempts to pass itself off as Complainant in this market by displaying the words “BONDI BATHER” on the disputed domain in a stylized font that is similar to the one Complainant uses to display its BONDI BATHERS mark. Complainant has attached documentation of its own website and online store and documentation of Respondent’s online store in its exhibits for comparison. Past panels have found that copying distinct stylistic elements from a complainant’s website is evidence of a respondent’s attempt to pass itself off as that complainant. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). The Panel agrees with Complainant’s contentions and finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent created the <bondibather.com> domain name in order to take advantage of a common typographical error, engaging in typosquatting, to attract Internet users. Respondent has simply removed the letter “s” from Complainant’s mark. Past panels have found such behavior is evidence of a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”) Therefore, the Panel finds such behavior by Respondent shows a lack of rights and interests in the domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant alleges that Respondent uses the domain name for the purpose of disrupting Complainant’s business. Complainant claims that Respondent is a direct competitor of Complainant, on the basis that they sell substantially similar products in the same market. Past panels have found bad faith in registration and use when a respondent operating a competing business with a complainant registers a confusingly similar domain name according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges Respondent registered the disputed domain name in order to attract confused Internet users to its resolving website for commercial gain. Complainant also alleges that Respondent uses the resolving website in an attempt to pass itself off as Complainant. Past panels have found such use to constitute bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Therefore, the Panel finds Respondent registered and is operating the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent registered the domain name with actual knowledge of Complainant’s rights in the BONDI BATHERS mark. Complainant states that prior to registration of the disputed domain name, Respondent made multiple attempts to purchase Complainant’s own website. Complainant has provided documentation of these attempts in its exhibits. Complainant argues that because Respondent was aware of Complainant and its business operations prior to registering the <bondibather.com> domain name, Respondent must have been aware of Complainant’s rights in the BONDI BATHERS mark at the time of registration. Past panels have found bad faith when respondents are aware of a complainant’s rights in a mark at the time of registration. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Respondent was actually aware of Complainant’s rights at the time of registration, and finds Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s registration of the <bondibather.com> domain name constitutes typosquatting, as the disputed domain name differs from Complainant’s mark only by the letter “s”. Past panels have found typosquatting to suffice as evidence of bad faith, in and of itself. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent registered and is operating the <bondibather.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bondibather.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 9, 2015
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