Rockstar Industries, LLP v. ButtonMakers.com
Claim Number: FA1601001658525
Complainant is Rockstar Industries, LLP (“Complainant”), represented by Drey A. Cooley of Capes, Sokol, Goodman & Sarachan, P.C., Missouri, USA. Respondent is ButtonMakers.com (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buttonmakers.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.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2016; the Forum received payment on January 28, 2016.
On January 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buttonmakers.com> 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 January 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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@buttonmakers.com. Also on January 29, 2016, 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 February 22, 2016.
Complainant's timely additional submission to the National Arbitration Forum was received on February 26, 2016.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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
Complainant argues that Respondent’s <buttonmakers.com> domain name is identical or confusingly similar to Complainant’s mark, in support of this Complainant asserts that
· it has rights in the BUTTONMAKERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,520,365, registered on April 29, 2014);
· it has continuously operated an online retail store since at least September 2004, along with two brick and mortar retail stores bearing the same name;
· <buttonmakers.com> domain name is identical to the BUTTONMAKERS mark because it contains the entire mark, and is altered by only the addition of the generic top-level domain (“gTLD”) “.com.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· Respondent is not commonly known by the <buttonmakers.com> domain name, as it does business under the name <buybuttonparts.com>;
· Respondent has never used or had any bona fide intentions to utilize <buttonmakers.com>, other than to forward it to <buybuttonparts.com>;
· Respondent fails to provide a legitimate noncommercial or fair use because the domain redirects internet users to Respondent’s own website, where it sells products in competition with Complainant.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent did not truly begin using the domain name until Spring 2015, at which time it began forwarding the domain to the <buttonmakers.com>
· Respondent uses the <buttonmakers.com> domain name in bad faith because it redirects Internet users to Respondent’s <buybuttonparts.com> website, where it sells products in competition with Complainant;
· Respondent registered the <buttonmakers.com> domain name in bad faith because it did so with actual knowledge of Complainant.
B. Respondent
In the response the Respondent argues that
· it is in the process of developing the <buttonmakers.com> domain name
· it uses the domain name to redirect to <buybuttonparts.com> until the domain is fully developed
· its registration of the <buttonmakers.com> domain name occurred in 2007, predating Complainant’s 2014 registration of the BUTTONMAKERS mark
· Complainant is attempting to do is called “reverse cybersquatting” or “reverse domain name hijacking”
C. Additional Submissions
Complainant
In the additional submission the Complainant argues that
· the fact that the trademark registration occurred after Respondent registered the subject domain name is not relevant;
· it began using the trademark as early as September 2004;
· the fact that the complaint was filed after Responded began forwarding visitors from <buttonmakers.com> to a competitor website owned by Respondent is not evidence of reverse domain hijacking.
Complainant is the owner of the BUTTONMAKERS (Reg. No. 4,520,365, registered on April 29, 2014) trademark which is registered with the United States Patent and Trademark Office.
Complainant began using the trademark as early as September 2004.
Respondent has never used <buttonmakers.com> other than to forward it to <buybuttonparts.com>.
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 claims it has rights in the BUTTONMAKERS mark through its registration with the USPTO. Complainant has provided this registration in its Annex E. Accordingly, the Panel finds that Complainant has rights in the BUTTONMAKERS mark according to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complaint argues that Respondent’s <buttonmakers.com> domain name is identical to the BUTTONMAKERS mark because it contains the entire mark, and is altered by only the addition of the gTLD “.com.” The Panel finds that the <buttonmakers.com> domain name is identical to the BUTTONMAKERS mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
As to the second 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 contends that Respondent is not commonly known by the <buttonmakers.com> domain name, as it does business under the name “BuyButtonParts.com.” Complainant claims that the WHOIS information listing “ButtonMakers.com” is not how Respondent is known, as the contact page associated with the disputed domain name, as provided in Annex B, references Respondent as “BuyButtonParts.com.” In addition, Respondent does not argue that it is commonly known by the <buttonmakers.com> domain name, but instead asserts that in 2004, it launched its official website where is does business as “BuyButtonParts.com.”
Accordingly, the Panel finds that Respondent is not commonly known by the <buttonmakers.com> domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <buttonmakers.com> domain name redirects internet users to Respondent’s own website where it sells products in competition with Complainant. Complainant has provided evidence of this use in Annex I, showing screenshots of the <buybuttonparts.com> domain, as well as evidence of its own use of the BUTTONMAKERS mark in its Annex H.
The Panel finds that Respondent fails to use the <buttonmakers.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See 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 pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Registration and Use in Bad Faith
Complainant claims that Respondent uses the <buttonmakers.com> domain name in bad faith because it redirects Internet users to Respondent’s own website, where it sells products in competition with Complainant of which Complainant has provided evidence.
The Panel finds that the submitted evidence is sufficient to show Respondent is a competitor of Complainant, accordingly the Panel finds that Respondent uses the <buttonmakers.com> domain name in disruptive bad faith under Policy ¶ 4(b)(iii). 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).”).
Complainant argues that Respondent’s disruptive competition, described above, is done in bad faith under Policy ¶ 4(b)(iv) on the basis that the redirection from the <buttonmakers.com> domain name to the <buybuttonparts.com> domain is done in order to profit through the creation of confusion about Complainant’s association with the latter domain name.
The Panel finds that Respondent attempts to profit through a likelihood of confusion, therefore uses the <buttonmakers.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Reverse domain name hijacking
The Respondent alleges that the Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Since the Panel finds in favor of the Complainant, it dismisses the request for a finding of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buttonmakers.com> domain name be TRANSFERRED from Respondent to Complainant.
dr. Katalin Szamosi Panelist
Dated: March 10, 2016
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