Fontem Holdings 4, B.V. v. Scott Doetsch
Claim Number: FA1607001683294
Complainant is Fontem Holdings 4, B.V. (“Complainant”), represented by Eric T Fingerhut of Dykema Gossett, PLLC, United States. Respondent is Scott Doetsch (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blucig.us>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2016; the Forum received payment on July 11, 2016.
On July 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <blucig.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@blucig.us. Also on July 12, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
Complainant uses its BLU mark in connection with electronic cigarettes and related goods and services. Complainant has registered the BLU mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,750,245, filed Sept. 16, 2010, registered June 9, 2015), which demonstrates Complainant’s rights in its mark. The <blucig.us> domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic term “cig” and the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain and is not the owner of a trademark that is identical to the domain. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to a website that displays hyperlinks to products and services that are directly competitive with Complainant’s business.
Respondent registered and is using the domain in bad faith. First, Respondent offered to “entertain” an offer to purchase the domain if Complainant would choose to make one. Second, Respondent’s use of the domain to host competing hyperlinks disrupts and competes with Complainant’s business. Third, Respondent, through the domain, diverts customers away from Complainant’s legitimate business, in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Fontem Holdings 4, B.V. of Amsterdam, Netherlands. Complainant is the owner of domestic and international registrations for the marks, BLU, BLU CIGS, BLU ECIGS and BLU & Design. Complainant has used its marks continuously since at least as early as 2009 in connection with its sale of electronic cigarettes and related goods and services. Complainant also provides additional information about its products at its website located at <blucigs.com>.
Respondent is Scott Doetsch of San Diego, CA, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the domain was registered on or about January 18, 2014.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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 uses its BLU mark in connection with electronic cigarettes and related goods and services. Complainant has registered the BLU mark with the USPTO (e.g., Reg. No. 4,750,245, filed Sept. 16, 2010, registered June 9, 2015), which Complainant argues demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), and that the complainant’s rights in the mark date back to the filing date of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thompson v. Zimmer, FA 190625 (Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel here finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i) dating back to September 16, 2010.
Complainant argues that the <blucig.us> domain is confusingly similar to Complainant’s BLU mark as it wholly incorporates the mark and merely adds the generic term “cig” and the ccTLD “.us.” Past panels have held that neither the addition of a generic term, nor the affixation of the “.us” ccTLD, serves to adequately distinguish a respondent’s domain from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). The Panel here finds that Respondent’s domain is confusingly similar to Complainant’s BLU mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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 (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). The Complainant has met this burden.
Complainant claims that Respondent has no rights or legitimate interests in the domain. Complainant contends that Respondent is not the owner of a trademark that is identical to the domain. The Panel notes that Respondent has not provided any evidence for the Panel’s consideration. Prior panels have held that a respondent lacks rights and legitimate interests in a domain where there is no evidence to support a finding that the respondent is the owner or beneficiary of a mark that is identical to a disputed domain. See Meow Media Inc. v. Basil, FA 113280 (Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). The Panel here finds that Respondent does not own any mark that is substantially similar to that of the disputed domain per Policy ¶ 4(c)(i).
Complainant asserts that Respondent is not commonly known by the domain. The WHOIS information for the domains lists “Scott Doetsch” as registrant. Because of the WHOIS information and Respondent’s failure to provide a response in this proceeding, the Panel finds that there is no factual basis to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent’s domain resolves to a website that displays hyperlinks to products and services that are directly competitive with Complainant’s business. Previous panels have held that a respondent lacks rights and legitimate interests where it uses a domain to host competing hyperlinks. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel here finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent offered to “entertain” an offer to purchase the domain if Complainant would choose to make one. Prior panels have held that a respondent violates Policy ¶ 4(b)(i) where it indicates to a complainant that it would consider selling the domain to the complainant. See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”). The Panel here finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s use of the domain to host competing hyperlinks disrupts and competes with Complainant’s business. Past panels have found that a respondent’s use of a domain to host competing hyperlinks constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent, through the domain, diverts customers away from Complainant’s legitimate business, in violation of Policy ¶ 4(b)(iv). Previous panels have concluded that a respondent’s use of a domain to display links to products and/or services that are in direct competition with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel here finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <blucig.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 22, 2016
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