Brooke Branning, Wolf & Moon Products, Inc. v. Stewart Kramer
Claim Number: FA1608001691103
Complainant is Brooke Branning, Wolf & Moon Products, Inc. (“Complainant”), California, USA. Respondent is Stewart Kramer (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bugoffscreensoz.com>, registered with Register.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2016; the Forum received payment on August 26, 2016.
On August 25, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <bugoffscreensoz.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 August 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@bugoffscreensoz.com. Also on August 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the BUG OFF mark, because it registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,739,046, registered Dec. 8, 1992). See Compl., at Attached Annex titled “IP PROOF”. Respondent’s <bugoffscreensoz.com> domain name is confusingly similar to the BUG OFF mark because “screens” is descriptive of Complainant’s product, and the addition of the generic term “oz” and a generic top-level domain (“gTLD”) is insufficient to distinguish the domain name from Complainant’s mark (less the omission of spaces).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is using the confusingly similar domain name to offer competing products that are of an inferior quality to Complainant’s “Bug Off Screens.”
Respondent has registered and is using the <bugoffscreensoz.com> domain name in bad faith. Respondent was formerly a dealer of Complainant’s “Bug Off Screens,” and is attempting to commercially gain by fraudulently exploiting Complainant’s BUG OFF mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Respondent registered the <bugoffscreensoz.com> domain name on January 15, 2012. Respondent did submit an email correspondence to FORUM. Respondent has “agreed to discontinue the use of the name “Bugoffscreensoz” in my business,” but requests that the disputed domain name be cancelled rather than transferred to Complainant. Respondent has used “Bugoffscreensoz” in his Australian business for over five years and transferring the disputed domain “would give [Complainant] the opportunity to unfairly damage [Respondent’s] business.”
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
Preliminary Issue: Other Correspondence
Complainant has provided the FORUM with additional correspondence from Respondent. The FORUM has determined that this correspondence is not considered a Response because it was only a single email outlining a request that the disputed domain name be cancelled rather than transferred to Complainant and was submitted to the Complainant, not to the FORUM. As such, the Panel considers this communication to be a non-responsive response.
The Panel finds that the dispute domain name is confusingly similar to Complainant’s valid and subsisting trademark, BUG OFF. The Complainant has adequately pled its rights in and to the trademark. The Respondent arrives at the disputed domain name by using the generic word “screens” which is descriptive of Complainant’s product, and adding the generic term “oz” and a generic top-level domain (“gTLD”) “.com.” This is insufficient to distinguish the domain name from Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Although Complainant does not argue it, the Panel finds that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain lists “Stewart Kramer” as the registrant. As there is no evidence in the record to indicate otherwise, the Panel finds that the Respondent is not known by <bugoffscreensoz.com> disputed domain name.
Additionally, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ (c)(i) and (iii). Complainant argues that Respondent is attempting to capitalize on the goodwill it has created for the BUG OFF trademark by selling a competing product made in China. Previous panels have held that selling counterfeit products or using a confusingly similar domain name to offer competing products does not meet the standards of Policy ¶¶ (c)(i) and (iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Alcon, Inc. v. ARanked, FA 1306493 (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).”).
As the Panel finds Complainant’s argument persuasive, the Panel finds that Respondent has no rights or legitimate interests in the <bugoffscreensoz.com> domain name.
In its non-responsive Response, Respondent seems to claim that it does have some legitimate commercial interest and has maintained this for five years; however, the only reliable evidence in the record is that submitted by Complainant and so the Panel has only this evidence on which to rely. This evidence points to the fact that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant contends that Respondent is a competitor of Complainant and is using the BUG OFF mark in the disputed domain name as an attempt to intentionally create confusion. Panels have found bad faith where a respondent uses a confusingly similar domain to offer similar products and services of a complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As such, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Additionally, the Panel finds that Respondent had actual knowledge of its BUG OFF mark when it registered the disputed domain name. Complainant alleges that Respondent was a customer and distributor of their “Bug Off Screen several years ago in Australia.” Although constructive notice is not sufficient to find bad faith under Policy ¶ 4(a)(iii), prior Panels have found actual notice when the respondent and complainant have had prior dealings. See Int’l Soc’y for Cellular Therapy v. L. Hache, FA 671078 (Forum June 13, 2006) (“In view of Respondent’s creation of the original <celltherapy.org> website and its management of the website on behalf of Complainant for several years, Respondent knew of the Complainant’s use of the domain name. This Panel therefore finds that Respondent acted in bad faith in registering the <celltherapy.org> domain name.”).
According to Complainant’s uncontroverted evidence, the parties had prior dealings. As such, the Panel finds that the Respondent registered the disputed domain name with full knowledge of Complainant’s rights in and to the trademark BUG OFF at the time it registered the disputed domain name. The Panel finds, therefore, that Respondent engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <bugoffscreensoz.com> domain name transferred from Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 30, 2016
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