Billy Bob’s Texas IP Holding, LLC v. Gavin Melendez
Claim Number: FA2002001882802
Complainant is Billy Bob’s Texas IP Holding, LLC (“Complainant”), represented by Scott L. Harper of Harper Bates & Champion, LLP, United States. Respondent is Gavin Melendez (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <billy-bobstickets.com>, 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.
David A Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <billy-bobstickets.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 February 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@billy-bobstickets.com. Also on February 17, 2020, 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 March 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A Einhorn 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, Billy Bob’s Texas IP Holding, LLC, operates a Texas entertainment venue including a concert site, dance hall, night club, restaurant, and store. Complainant has rights in the BILLY BOB’S mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,611,187, registered Aug. 28, 1990). Respondent’s <billy-bobstickets.com> domain name is confusingly similar to Complainant’s mark because it essentially incorporates Complainant’s BILLY BOB’S mark, merely replacing the space between words with a hyphen and removing the apostrophe, then adding the descriptive term “tickets” and a generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <billy-bobstickets.com> domain name. Respondent is not licensed or authorized to use Complainant’s BILLY BOB’S mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant in competition with Complainant.
Respondent registered and uses the <billy-bobstickets.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain through directly competitive behavior. Further, Respondent has actual knowledge of Complainant’s rights in the BILLY BOB’S mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was registered on June 20, 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the BILLY BOB’S mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the BILLY BOB’S mark with the USPTO (e.g., Reg. No. 1,611,187, registered Aug. 28, 1990). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <billy-bobstickets.com> domain name is confusingly similar to Complainant’s mark because it essentially incorporates Complainant’s BILLY BOB’S mark, merely replacing the space between words with a hyphen and removing the apostrophe and then adding a descriptive term. Addition or removal of punctuation such as hyphens and apostrophes is irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Complainant notes that the additional term “tickets” creates further confusion since it describes an aspect of Complainant’s business. Thus, the Panel finds that the disputed domain name is confusingly similar to the BILLY BOB’S mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent does not have rights or legitimate interests in the <billy-bobstickets.com> domain name since Respondent is not licensed or authorized to use Complainant’s BILLY BOB’S mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1620789 (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 WHOIS information of record lists “Gavin Melendez” as the registrant and no information suggests that Complainant has authorized Respondent to use the BILLY BOB’S mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to create a likelihood of confusion with a complainant for the sale of unauthorized products. Use of a confusingly similar domain name to pass off as a complainant for the sale of goods or services is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panellist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). The Panel agrees with Complainant and finds that Respondent is not using the domain name for 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).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel infers that Respondent had actual knowledge of Complainant’s rights in the BILLY BOB’S mark when it registered and used the domain. Actual knowledge can be found by a respondent’s reference to a complainant’s marks, logos, and other information on their webpage. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant submits that Respondent had actual knowledge based on the notoriety of Complainant’s mark, the distinctiveness of the mark, and the content of Respondent’s website associated with the disputed domain. The Panel agrees, and finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <billy-bobstickets.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 18, 2020
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