Beach Trading Co. Inc. v. Luis Alfonso Jaramillo Lenis
Claim Number: FA1705001731678
Complainant is Beach Trading Co. Inc. (“Complainant”), represented by Gaston Kroub of Kroub, Silbersher & Kolmykov PLLC, New York, USA. Respondent is Luis Alfonso Jaramillo Lenis (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buydig-online.com>, registered with 1&1 Internet SE.
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 May 15, 2017; the Forum received payment on May 15, 2017.
After numerous requests, the Registrar, 1&1 Internet SE, has not confirmed to the Forum that the <buydig-online.com> domain name is registered with 1&1 Internet SE or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On May 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2017 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@buydig-online.com. Also on May 30, 2017, 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 June 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration 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 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, Beach Trading Co. Inc., uses the BUYDIG.COM mark to provide and market products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,446,277, registered Apr. 24, 2001). Respondent’s <buydig-online.com> is identical or confusingly similar as it contains the mark in its entirety, merely adding a hyphen and the generic word “online”.
Respondent does not have rights or legitimate interests in the <buydig-online.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the BUYDIG.COM mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the website to sell the same or similar goods as Complainant to confuse and mislead consumers as to Respondent’s affiliation with Complainant.
Respondent has registered and used the <buydig-online.com> domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the website. Respondent registered with actual knowledge the disputed domain name to intentionally trade on the goodwill and notoriety of Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Beach Trading Co. Inc., of Edison, NJ, USA. Complainant is the owner of domestic and international registrations for the mark BUYDIG.COM, which it has continuously used since at least as early as March 7, 2000, in connection with its provision of online retail services and telephone ordering services for various types of electronic and digital equipment.
Respondent is Luis Alfonso Jaramillo Lenis, of London, UK. Respondent’s registrar’s address is listed as Montabauer, Germany. The Panel notes that the disputed domain name was created on or about September 5, 2016.
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.”).
Complainant claims rights in the BUYDIG.COM mark based upon its registration with the USPTO (Reg. No. 2,446,277, registered Apr. 24, 2001). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the BUYDIG.COM mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <buydig-online.com> is identical or confusingly similar to the BUYDIG.COM mark as it contains the mark in its entirety, only adding a hyphen and the generic term “online”. Past panels have found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA 1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.”). Hyphenation has also been deemed irrelevant for the purposes of Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that the <buydig-online.com> does not contain changes that sufficiently distinguish it from the BUYDIG.COM mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <buydig-online.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BUYDIG.COM mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Luis Alfonso Jaramillo Lenis.” Additionally, the record lacks evidence to support a claim that Respondent was authorized to register a domain name using Complainant’s mark. 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). The Panel here finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is indicated by Respondent’s failure to use the name for bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <buydig-online.com> domain name is attempting to confuse and mislead consumers as to the Respondent’s affiliation with Complainant. Such behavior does not support disputed rights or legitimate interests. See Fadal Engineering, LLC v. DANIEL STRIZICH, INDEPENDENT TECHNOLOGY SERVICE INC., FA 1409001581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant asserts that Respondent is using an identical or confusingly similar domain name to sell same or similar goods as Complainant. In support of its contention, Complainant provides evidence in the nature of a customer receipt from the disputed domain name. Complainant further asserts that it has received service requests from customers who had purchased from Respondent. The Panel here finds that Respondent’s use of <buydig-online.com> evinces a lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts that Respondent uses the disputed domain name to trade off on the fame and notoriety of Complainant’s mark, for commercial gain, by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain name. Specifically, selling the same or similar goods as a complainant—or otherwise competing with a complainant—may evince bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Complainant provided copies of a customer receipt from the disputed domain name showing evidence of solicited services related to Complainant’s business. The Panel here finds that Respondent’s behavior attempts to cause actual confusion as to an affiliation with Complainant for commercial gain and finds that Respondent registered and uses the <buydig-online.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <buydig-online.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 6, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page