DECISION

 

BULU, INC. v. Chris CHEN

Claim Number: FA1811001816093

 

PARTIES

Complainant is BULU, INC. (“Complainant”), represented by Matthew A. Poulsen, Nebraska, USA.  Respondent is Chris CHEN (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bulu.com>, registered with Guangzhou Ming Yang Information Technology Co., Ltd.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 12, 2018; the Forum received payment on November 12, 2018. The Complaint was received in both Chinese and English.

 

On November 16, 2018, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the Forum that the <bulu.com> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the name.  Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., Ltd 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 November 26, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 17, 2018 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@bulu.com.  Also on November 26, 2018, the Chinese language 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 December 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Language of the Proceedings

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant’s name is recognized as being a leader in subscription box services in the United States and Internationally. Complainant has shipped over six million samples of health foods, dietary supplements, and related products via their subscription box service across the United States and the world. Complainant has rights in the BULU BOX (e.g. Reg. No. 4,524,229, registered May 6, 2014) and BULU (e.g. Reg. No. 5,384,961, registered Jan. 23, 2018) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex 1. Respondent’s <bulu.com> domain name is identical to Complainant’s well-known marks.

 

2.    Respondent has no rights or legitimate interests in the <bulu.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

3.    Respondent registered and uses the <bulu.com> domain name in bad faith. Respondent clearly registered the domain name to sell the domain name to Complainant for an amount in excess of out-of-pocket expenses, as it attempted to sell it to Complainant for $200,000 and subsequently for $500,000. See Compl. Annexes 4-8. Further, Respondent has registered over 7,000 domain names and the record is void of evidence of good-faith. See Compl. Annex 10.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <bulu.com> domain name is confusingly similar to Complainant’s BULU BOX mark.

2.    Respondent does not have any rights or legitimate interests in the <bulu.com> domain name.

3.    Respondent registered or used the <bulu.com> domain name in bad faith.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the BULU BOX (e.g. Reg. No. 4,524,229, registered May 6, 2014) and BULU (e.g. Reg. No. 5,384,961, registered Jan. 23, 2018) marks through its registration of the marks with the USPTO. See Compl. Annex 1. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the BULU BOX and BULU marks for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <bulu.com> domain name is identical to Complainant’s well-known marks. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <bulu.com> domain name is identical to the BULU mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <bulu.com> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Chris CHEN” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BULU and/or BULU BOX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <bulu.com> domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant claims that Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays the error message “This site can’t be reached.” See Compl. Annex 3. Accordingly, the Panel finds that Respondent fails to make any use of the domain name, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent clearly registered the <bulu.com> domain name to sell the domain name to Complainant for an amount in excess of out-of-pocket expenses, as it attempted to sell it to Complainant for $200,000 and subsequently for $500,000. Offering a confusingly similar domain name for sale can evince bad faith under the Policy. See George Weston Bakeries Inc. v. McBroom, FA 933276 (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). Complainant provides email communications between itself and Respondent, which shows that Complainant initially reached out to Respondent to purchase the domain name, and Respondent countered by requesting $200,000, and later $500,000. See Compl. Annexes 4-8. As such, the Panel uses Respondent’s offering of the domain name for sale directly to the Complainant as evidence of bad faith Policy ¶ 4(b)(i).

 

Further, Complainant contends that Respondent has registered over 7,000 domain names and the record is void of evidence of good-faith. A complainant may use evidence of a respondent other alleged trademark infringements to evidence bad faith in the instant proceeding under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides the WHOIS information for the domain name, which states that the “Name Servers” used for the domain name registration owns 7,177 total domain names. See Compl. Annex 10. Accordingly, the Panel agrees and finds that Respondent registered the <bulu.com> domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bulu.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

January 2, 2019