Woot, Inc. v. Robert Brooks
Claim Number: FA1506001622681
Complainant is Woot, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Robert Brooks (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bobswoot.com> and <robertswoot.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2015; the Forum received payment on June 4, 2015.
On June 4, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bobswoot.com> and <robertswoot.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@bobswoot.com, postmaster@robertswoot.com. Also on June 8, 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.
A timely Response was received and determined to be complete on June 29, 2015.
On July 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant Woot, Inc. alleges that it has offered online retail services using a one-deal-a-day business model via the domain name <woot.com> for over a decade. Complainant alleges that it is a longstanding business recognized for its commercial success—success evidenced by its well-publicized acquisition by Amazon.com in 2010.
In addition to its use of <woot.com>, Complainant also uses a variety of other domain names for sub-sites including, among many others, <electronicswoot.com> and <sportwoot.com>. Complainant owns WOOT, WOOT! and related marks registered in the United States Patent and Trademark Office (“USPTO”), and uses them in connection with its online retail business. These various marks were registered between from 2005 to 2012.
Respondent Robert Brooks registered the domain names <bobswoot.com> and <robertswoot.com> with GoDaddy.com on April 24 and 25, 2015, respectively. Complainant contacted Respondent on April 24 requesting transfer of ownership of <bobswoot.com>. Respondent offered to sell <bobswoot.com> and <robertswoot.com>. Complainant avers that the domain names are simply possessive names in front of its WOOT mark which is then followed by the generic top-level domain name (“gTLD”) “.com”—thus creating domain names confusingly similar to its mark.
Complainant alleges that Respondent has no rights or legitimate interest in the domain names. Respondent has no connection to Complainant or permission to use its WOOT mark and uses the domain names to redirect Internet traffic from Complainant to <BobsBargainBin.com>, a competing website owned by Respondent.
Lastly, Complainant alleges that Respondent registered and used the domain names in bad faith. Complainant’s national recognition, Respondent’s position as a competitor, and a reference to <woot.com> Respondent’s <bobsbargainbin.com> and <bobswoot.com> websites demonstrate bad faith at the time of registration. Respondent’s attempt to capitalize on Complainant’s goodwill and commercial success, its offer to sell the domain names, and its display of offensive images at <robertswoot.com>, allegedly to tarnish the WOOT mark, all evidence bad faith in use.
B. Respondent
Respondent provides an “Executive Summary” regarding the <bobswoot.com> domain name only. Respondent alleges that he registered the domain name in an effort to expand his business from <BobsBargainBin.com> by advertising around his brand spokesperson, Bob. Respondent selected the domain name because it combines his given name with the word “swoot,” a word he found in the Urban Dictionary, an online comedic dictionary. Respondent uses SWOOT as an acronym for “Selling Whatever Online One Time,” a description of his business model.
The Panel finds that Complainant has met its burden of proof to show that Respondent’s domain names are confusingly similar to a trademark owned by Complainant; that Respondent does not have legitimate rights in the domain names; and that the domain names were registered and used in bad faith.
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.
It is undisputed that Woot, Inc. owns federal registrations for the WOOT mark and has used it for over a decade. Complainant’s registrations of its mark on the Principal Register of the USPTO establishes a presumption of validity of the marks under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Respondent does not rebut this presumption.
The domain names incorporate Complainant’s mark in full and add a possessive name before and the gTLD “.com” after. Neither of these is sufficient to reduce the likelihood of confusion. See Knives Plus, Inc. v. Mark Greenleaf, FA 1126655 (Nat. Arb. Forum Mar. 4, 2008) (finding <marksknivesplus.com> confusingly similar to KNIVES PLUS); Google Inc. v. Gillespie, FA 1434643 (Nat. Arb. Forum March 15, 2013) (finding <googlerobert.com> confusingly similar to GOOGLE); Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA 1254682 (Nat. Arb. Forum May 14, 2009) (“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark.”). Complainant’s use of other domain names with the <____woot.com> format further suggests consumers would likely become confused into thinking the disputed domain names are associated with Woot, Inc.
Respondent’s contention that the domain name references “Bob SWOOT” rather than “Bob’s WOOT”” is unconvincing. The use of the possessive on <bobswoot.com> is the most intuitive reading for consumers, especially given the fact that the website is used to promote Respondent’s other website <bobsbargainbin.com> which similarly uses the possessive in its domain name. Moreover, the SWOOT acronym only appeared on <bobswoot.com> after Respondent received Complainant’s request for transfer of that domain name. The acronym appears to be simply a post hoc attempt to justify use of a confusingly similar mark. See Microsoft Corp. and Skype v. M-Style/Morgun, FA 1491620 (Nat. Arb. Forum May 10, 2013). Even if the Panel did credit Respondent’s claim that he intended to use “SWOOT,” consumers are still likely to confuse the domain names with the WOOT mark of Respondent’s competitor Woot, Inc.
Complainant has made a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has not offered evidence to the contrary.
Respondent is not affiliated with Woot, Inc. and has no rights to the WOOT mark. Use of a confusingly similar domain name to promote deals on <BobsBargainBin.com>, a competing online retail site for consumer goods, is not a legitimate use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”); Amazon Technologies, Inc. v. Lin, FA 1480702 (Nat. Arb. Forum Feb 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not a bona fide offering of goods or services”); Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services.”).
Respondent’s name is Robert Brooks, so his use of variants of his given name may seem to give rise to rights or legitimate interests. Prior panels have held that there are valid rights in domain names incorporating personal names. See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding a person who registers a variant of their full name has rights in the domain name). However, Respondent did not incorporate his full name, and incorporating a common given name does not necessarily give rise to special rights. At a minimum, Respondent would have needed to provide evidence of a developed business plan to use the disputed domain name in connection with a bona fide offering of goods or services. See Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001) (holding evidence of a business plan to use the domain name in connection with a bona fide offering of goods and services is required for legitimate interest). While Respondent contends that the domain names were an extension of his advertising campaign using the character Bob from <BobsBargainBin.com>, he fails to show any business plan for offering goods or services or a legitimate use.
Having only recently created the acronym in response to Complainant’s request for transfer, Respondent has no rights or legitimate interest in the mark “SWOOT.” Even though the website located at <bobswoot.com> currently displays the acronym, the landing page is used only to promote <BobsBargainBin.com> and lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use. Even more obviously, the scatological images currently at <robertswoot.com> show Respondent’s intent to tarnish Complainant’s image, as well as its lack of legitimate use for that domain name.
Respondent registered and used the domain names in bad faith. Complainant’s WOOT mark was well-known generally and known by Respondent at the time of registration. Publicity surrounding Complainant and Respondent’s position as a competitor alone strongly suggest that Respondent likely had knowledge of the WOOT mark. On top of that, Respondent included a reminder to “Check Out http://www.woot.com” on the landing pages of both <bobsbargainbin.com> and <bobswoot.com>. See Compl., at Attached Ex. G. Registration with knowledge of Complainant’s rights is evidence of bad faith. See Skype v. Caruso, FA 1431445 (Nat. Arb. Forum May 4, 2012) (Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name further evidences respondent’s bad faith under Policy ¶ 4(b)(iii)”).
Respondent also used the domain names in bad faith. By using a confusingly similar mark and mentioning <woot.com> on the <bobwoot.com> landing page, Respondent created a false impression of affiliation with Complainant. See MetroPCS, Inc. v. Robertson, FA 809749 (Nat. Arb. Forum Nov. 13, 2006) (finding bad faith where Respondent’s website incorrectly suggested affiliation with Complainant). Respondent also used the confusingly similar mark to benefit from the goodwill associated with Complainant’s mark by diverting customers from Complainant to a competitor—<BobsBargainBin.com>. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)”). Additionally, Respondent’s willingness to sell the domain names is further evidence of bad faith. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent’s offer to sell the domain name was evidence of bad faith). Finally, the images Respondent has displayed at <robertswoot.com> reek of bad faith. See The Gingiss Group Inc. v. Garystux.com, FA 109524 (Nat. Arb. Forurm Jan. 11, 2002) (finding activity that “tarnishes Complainant’s mark” is bad faith use).
Respondent’s “SWOOT” acronym is a post hoc rationalization for its bad faith use and does not prevent a finding of bad faith. See Microsoft Corp. v. World Media Svc., FA 1254446 (Nat. Arb. Forum May 11, 2009) (finding bad faith in spite of the respondent’s claim that videomsn.com stood for “video marketing support network”).
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 <bobswoot.com> and <robertswoot.com> domain names be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: July 16, 2015
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