Fosbrooke, Inc. v. Biotech Scams
Claim Number: FA1510001640351
Complainant is Fosbrooke, Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Biotech Scams (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tuftandneedle.co>, 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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2015; the Forum received payment on October 1, 2015.
On October 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tuftandneedle.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@tuftandneedle.co. Also on October 1, 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 October 7, 2015.
On October 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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 name be transferred from Respondent to Complainant.
A. Complainant
1- Complainant, Fosbrooke, Inc., owns exclusive rights to the highly distinctive trademark TUFT & NEEDLE, which it uses in connection with the engineering, advertising, and sale of mattresses.
2- Complainant owns federal trademark rights through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,616,761, filed Feb. 12, 2014, registered Oct. 7, 2014).
3- Complainant began using its TUFT & NEEDLE mark to engineer, advertise, and sell high-quality mattresses through an innovative “direct to consumer” business model since at least as early as October 10, 2012.
4- The <tuftandneedle.co> domain name is confusingly similar to Complainant’s TUFT & NEEDLE mark and its primary domain name “TuftAndNeedle.com” and a common misspelling when consumers fail to type the final “m” when entering a .COM address. The <tuftandneedle.co> domain name includes the TUFT & NEEDLE mark, substituting only the word “and” for the ampersand symbol, and inserts the country code top-level domain (“ccTLD”) “.co.”
5- Respondent has no rights or legitimate interests in respect to the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods and services, nor any legitimate noncommercial or fair use of the disputed domain name.
6- Respondent registered the infringing domain name on August 18, 2014, long after Complainant adopted and began using its TUFT & NEEDLE trademark, and after the filing date of the application that matured into United States federal trademark Reg. No. 4616761. Annexes B, C and E.
7- Respondent uses the disputed domain name to host numerous pay-per-click advertisements, some of which directly compete with Complainant.
8- After receiving a cease and desist letter from Complainant, Respondent’s website now advertises services for a non-existent barbershop to create the false impression that Respondent has legitimate rights to the Tuft & Needle trademark. See Compl., at Attached Ex. F.
9- Respondent has engaged in bad faith registration and use of the <tuftandneedle.co> domain name and listed the disputed domain name for sale, for the sum of $99,000. See Compl., at Attached Ex. E. This offer to sell the infringing domain name for an amount far in excess of the actual registration fee is conclusive evidence of Respondent’s bad faith registration and use of the domain name, and violation of UDRP Policy Para. 4(b)(i).
10- Respondent’s bad faith use is demonstrated by Respondent’s pattern of cybersquatting. In addition to the domain name at issue in this dispute, Respondent has registered numerous other domain names that infringe third party marks owned by Complainants’ competitors and other companies. Respondent’s offer to sell many of these domain names for $14,500 is clear evidence of a bad faith intent to profit from cybersquatting.
11- Respondent registered the disputed domain name using false WHOIS information. As those Whois records show, Respondent did not provide accurate information about his/her name, physical location or phone number.
B. Respondent
1- Respondent registered the domain name on August 18, 2014, prior to the issuance of a United States federal trademark (Reg. No. 4616761) on October 7, 2014.
2- Respondent registered the disputed domain name in good faith and denies any knowledge of Complainant or its business.
3- Respondent has not engaged in cybersquatting, but merely has a variety of interests, hobbies, and business for which it has purchased domain names. 3- Respondent is not a “link farm” as alleged by Complainant, but uses a common service from Google called “AdSense.” Respondent does not select the advertisements that get displayed.
3- The disputed domain name is currently under construction, and the barbershop content featured on the resolving website is a template.
4- Respondent has been contacted, despite Complainant’s allegations that Respondent’s WHOIS information is false.
Fosbrooke, Inc., owns exclusive rights to trademark TUFT & NEEDLE (US Reg. No. 4,616,761, filed Feb. 12, 2014, registered Oct. 7, 2014), which has been used in connection with the engineering, advertising, and sale of mattresses as from October 2012. Fosbrooke, Inc. registered and uses the domain name <TuftAndNeedle.com>. Biotech Scams registered the confusingly similar domain name <tuftandneedle.co> on August 18, 2014, long after Complainant adopted and began using its TUFT & NEEDLE trademark, and after the filing date of the application.
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.
Complainant, Fosbrooke, Inc. proved to have exclusive rights to the trademark TUFT & NEEDLE in United States, Registration No. 4,616,761, filed on February 12, 2014 and registered on October 7, 2014 and to use it in connection with the engineering, advertising, and sale of mattresses at least as from October 2012 (Annex B).
Complainant proved to have registered the domain name <TuftAndNeedle.com> and promote its TUFT & NEEDLE products on it. Respondent, Biotech Scams, registered the confusingly similar domain name <tuftandneedle.co> on August 18, 2014. Previous Panels have found that registration of a mark with the USPTO is sufficient to demonstrate rights in the mark, and that the relevant date for establishing rights in a mark dates back to a complainant’s filing date. See Capital One Financial Corp. v. Private Registration / WhoisGuardService.com, FA1505001620195 (June 19, 2015) (“…that the relevant date of rights in a registered mark is the date the application for said mark was filed”.). Also in Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
This Panel determines that Complainant has established Policy ¶ 4(a)(i) rights in the TUFT & NEEDLE mark dating back to its February 12, 2014 filing date.
The disputed domain name <tuftandneedle.co> includes the TUFT & NEEDLE mark, substituting only the word “and” for the ampersand symbol, and inserts the ccTLD “.co”. Prior Panels have found that none of these alterations are relevant for purposes of paragraph 4(a)(i) of the Policy. See Edelman Shoe, Inc. v. Hulmiho Ukolen / Poste restante, FA1507001630741 (Nat. Arb. Forum August 27, 2015) (“The disputed domain name is identical to Complainant's registered trademark, but for the omission of spaces, the substitution of the word "and" for the ampersand symbol, and the addition of the ".com" top-level domain. None of these alterations are relevant for purposes of paragraph 4(a)(i) of the Policy.” See also JES Publishing Corp. v. Brand Wellard, FA 1036201 (Nat. Arb. Forum Sept. 11, 2007) (finding that the replacement of the ampersand in the mark with the word “and” is a change without legal significance).
The Panel finds that the disputed domain name <tuftandneedle.co> is identical to
the TUFT & NEEDLE mark and that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests on the <tuftandneedle.co> domain name, since it is not commonly known by the cited domain names. The WHOIS information corresponding to the domain name confirms this fact since it bears no resemblance to it (Annex E).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); 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.”).
This Panel finds that Respondent has not submitted evidence to prove that Biotech Scams is commonly known by the disputed domain name.
Complainant proved that Respondent’s website now advertises services for a barbershop. (Annex F). This Panel finds that Respondent has not submitted evidence to prove that it is a real business: the resolving website does not provide a physical address or telephone number to contact.
Prior Panels have stated that this type of conducts lead to strong indications that the domain name was registered to take advantage of Complainant’s trademark. See DaimlerChrysler AG v. Enigma a/k/a Enigma Advocacy Corp., FA0508000535460 (Nat. Arb. Forum October 11, 2005) (In addition, bearing in mind Respondent’s conduct in connection with the registration and the use of the <daimlerchrysler.org> domain name, the Panel considers that there are strong indications that Respondent, by registering the disputed domain names, had the intent to take advantage of Complainant’s well-known trademarks).
In addition, prior Panels have decided that respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) in cases of a website featuring links to goods and services unrelated to the complainant. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the <enterprise-car-sales.com> domain name to operate a website featuring links to goods and services unrelated to the complainant).
This Panel finds that Respondent has not made a bona fide offering of goods and services, nor any legitimate noncommercial or fair use of the disputed domain name based on the use of the domain name to divert customers to its website which offers unrelated goods to the complainant. See Time Warner Inc. v. The Data in Bulkregister.com’s Whois Database Is P / Momm Amed IA / Seocho, FA1508001633705 (Nat. Arb. Forum September 24, 2015) (Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to redirect Internet users to a website unrelated to the complainant).
Thus, the Panel finds that Respondent has failed to establish a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has proved that Respondent listed the disputed domain name for sale, for the sum of $99,000. (Attached Annex E). Prior Panels have found that a respondent’s offering of disputed domain names for an amount in excess of out-of-pocket costs can demonstrate bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
The disputed domain name is almost identical to the Complainant’s trademark and the Top Level Domain “.CO” of TuftAndNeedle.co” is nearly identical to Complainant’s “TuftAndNeedle.com”. In addition this Panel agrees with Complaint that it is usual for consumers to fail to type the final “m” when entering a .COM address. New Dream Network, LLC v. Yuanjin Wu, Case No. DCO2010-0013 (WIPO Oct. 25, 2010) (holding that “Dreamhost.co” is a typosquatting infringement of “DreamHost.com”.)
This Panel finds that the registration of an identical domain name with the Top Level Domain “.co” that capitalizes on the typographical error of an Internet user is considered typosquatting and prior Panels have considered typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). See Ghost Management Group, LLC v. Ruben Granados / ShooshTime Inc., FA1505001619814, June 29, 2015.
The Panel therefore determines that Respondent has acted in bad faith under Policy ¶ 4(b)(i) and 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 <tuftandneedle.co> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: October 23, 2015.
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