Accella Polyurethane Systems LLC v. Jeff Houpe / Bullet Liner NWA
Claim Number: FA2305002045596
Complainant is Accella Polyurethane Systems LLC (“Complainant”), represented by Jordan LaVine of Flaster Greenberg PC, Pennsylvania, USA. Respondent is Jeff Houpe / Bullet Liner NWA (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bulletlinernwa.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on May 23, 2023; Forum received payment on May 23, 2023.
On May 23, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bulletlinernwa.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 May 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2023 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@bulletlinernwa.com. Also on May 23, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 offers innovative, high-performance polyurethane products. Complainant asserts rights in the BULLET LINER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,961,668, registered May 17, 2011). The <bulletlinernwa.com> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name consists of the BULLET LINER mark with the addition of the generic geographic designation “NWA” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no legitimate interests in the <bulletlinernwa.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the BULLET LINER mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. The Domain Name does not resolve to an active website but Respondent does hold an Instagram profile indicating that it competes directly with Complainant.
Respondent registered and uses the <bulletlinernwa.com> domain name in bad faith. Respondent is misleading persons into believing Respondent is affiliated with Complainant. Respondent registered the Domain Name to create confusion with Complainant’s mark for commercial gain. Respondent offered to sell the Domain Name to Complainant.
B. Respondent
Respondent failed to submit a formal Response in this proceeding however on May 24, 2023 Respondent sent Forum an e-mail, the relevant portion being extracted below.
“Everything you’re wanting cost money. I have no problem selling and transferring it to you. I paid for it all, so will you. $10k now or 20k when we go to court. I own the domain, and associated accounts. I paid for them and you’ll not find my signature anywhere agreeing they are anybody else’s or anybody else can have access to them. Stop emailing me. Have me served properly. Your harassment has no warrant.”
Complainant holds trademark rights for the BULLET LINER mark. The Domain Name is confusingly similar to Complainant’s BULLET LINER mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 has rights in the BULLET LINER mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,961,668, registered May 17, 2011). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). 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).”).
The Panel finds that the <bulletlinernwa.com> domain name is confusingly similar to Complainant’s BULLET LINER mark because it merely adds the geographical abbreviation “NWA” (Northwest Arkansas) to the wholly incorporated mark and also adds the “.com” gTLD. The addition of a geographical term and a gTLD to a wholly incorporated mark is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); See also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the BULLET LINER mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “Jeff Houpe / Bullet Liner NWA” as registrant of record. However there is no affirmative evidence that the Respondent is actually commonly known under the Jeff Houpe / Bullet Liner NWA name as opposed to simply registering the Domain Name under a name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”). Given the lack of evidence that the Respondent is actually known under a name corresponding to the Domain Name, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which by itself does not demonstrate rights or legitimate interests. Complainant provides evidence that Respondent refers to the Domain Name on its Instagram account where Respondent, under the BULLET LINER mark (and reproducing images of Complainant’s logo), purports to offer goods and services related to and in direct competition with Complainant’s goods and services. The use of a confusingly similar domain name in order to offer goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Moreover, shortly after the Domain Name was registered Respondent sent an email to Complainant (as well as a second one to Forum referred to earlier in the decision) seeking payment of a significant sum in exchange for transferring the Domain Name. Absent any other explanation, this indicates that the Domain Name was registered for the purpose of selling it to Complainant, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
While the Domain Name was registered on January 14, 2015, Respondent, in its May 21, 2023 e-mail to the Complainant, indicated that it acquired the Domain Name from a third party in 2019-20. The Panel finds that, at the time Respondent acquired the Domain Name Respondent had actual knowledge of Complainant’s BULLET LINER mark since the Complainant is a well-known entity and the Respondent has an Instagram page that makes multiple references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates the BULLET LINER mark and refer to it on an Instagram site offering goods and services relating to and competing with Complainant other than to take advantage of Complainant’s reputation in the BULLET LINER Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that, notwithstanding the lack of an active website at the Domain Name, Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s BULLET LINER Mark for commercial gain by making reference to the confusingly similar Domain Name on its Instagram site in a manner that misleads consumers into thinking that Respondent is in some way connected to the Complainant (such as being an authorized distributor). Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Furthermore, Respondent has, without active use of the Domain Name, acquired a domain name that is confusingly similar to the BULLET LINER mark and offered it for sale to the Complainant for a sum exceeding any likely out-of-pocket costs incurred in the registration of the Domain Name. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). In the present case, given the nature of the Domain Name, the manner in which it has been used (not at all, on the evidence before the Panel), and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has 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 <bulletlinernwa.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 20, 2023
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