DECISION

 

BWI Companies, Inc. v. [NAME REDACTED]

Claim Number: FA2401002079663

 

PARTIES

Complainant is BWI Companies, Inc. ("Complainant"), represented by Michael G. Nunnally of King & Spalding LLP, Texas, USA. Respondent¹ is [Name Redacted] ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dwicompanies.com> (the "disputed domain name"), registered with Wix.com Ltd (the "Registrar").

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 17, 2024; Forum received payment on January 17, 2024.

 

On January 22, 2024, the Registrar confirmed by e-mail to Forum that the <dwicompanies.com> disputed domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Wix.com 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 January 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024 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@dwicompanies.com. Also on January 23, 2024, 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,² Forum transmitted to the parties a Notification of Respondent Default.

 

On February 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a United States lawn and garden, animal health, professional grower, turf, landscape, agriculture, and pest management supply distributor, founded in 1958.

 

Complainant claims rights in the BWI trademark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., BWI (stylized), United States Trademark Registration No. 3,526,387, registered on November 4, 2008), with a date of first use in commerce of January 1, 1978, in international classes 31 and 35; and BWI (stylized), United States Trademark Registration No. 4,022,519, registered on September 6, 2011, in international classes 31 and 35 (hereinafter collectively referred to as the "BWI Mark").³ Complainant also owns the domain name <bwicompanies.com>, which resolves to Complainant's official website at "www.bwicompanies.com".

 

Complainant claims that Respondent's <dwicompanies.com> disputed domain name is confusingly similar to Complainant's BWI Mark, as the disputed domain name incorporates the BWI Mark in its entirety, albeit with a minor typographical error, adds the descriptive term "companies", and is followed by the generic Top-Level Domain ("gTLD") ".com".

 

Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name as Complainant claims that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of the BWI Mark in a domain name per Policy paragraph 4(c)(iii). Moreover, Respondent is not making a bona fide offering of goods or services through use of the disputed domain name, nor a legitimate noncommercial or fair use under Policy paragraphs 4(c)(ii) and (iv), respectively. Rather, Respondent initially used the disputed domain name to redirect to a "Coming Soon" countdown webpage bearing Complainant's BWI Mark. The disputed domain name was also used to commit several cybercrimes against Complainant, such as setting up bank accounts and credit cards. Complainant filed police reports regarding these cybercrimes and portions of the reports are submitted as an annex to the Complaint.

 

Complainant also contends that Respondent registered and is using the disputed domain name in bad faith as Respondent used the disputed domain name for commercial gain by creating a likelihood of confusion between Complainant and Respondent. Further, Respondent provided false contact information in connection with the registration of the disputed domain name, in this case constituting identity theft, since Respondent used the name of a retired executive of Complainant to register the disputed domain name.

 

The disputed domain name was registered on December 19, 2023, the same date that Respondent set up its resolving webpage. The disputed domain name redirects to a countdown webpage, with the BWI Mark in the top-left corner of the page and the statement "Coming Soon" in the top center of the page along with the number of days, hours, minutes and seconds until the website goes live.

 

B. Respondent

Respondent failed to submit a Response in this proceeding but did write to Forum, stating that Respondent would sell the disputed domain name for USD 150k.

 

FINDINGS

The Panel finds that Complainant has rights in the BWI Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant's BWI Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used 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 and 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 disputed domain name should be cancelled or transferred:

 

(1)       the disputed 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 disputed domain name; and

(3)       the disputed 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").

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the BWI Mark as set forth below.

 

Complainant has rights in the BWI Mark based on its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy paragraph 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 paragraph 4(a)(i)). Here, Complainant provides copies of its BWI trademark registrations with the USPTO (e.g., BWI (stylized), United States Trademark Registration No. 3,526,387, registered on November 4, 2008, with a date of first use in commerce of January 1, 1978, in international classes 31 and 35). Therefore, the Panel finds that Complainant has rights in the BWI Mark per Policy paragraph 4(a)(i).

 

Here, the disputed domain name consists of a misspelling⁴ of the BWI Mark, substituting the letter "d" for the letter "b", and then followed by the gTLD ".com". Registration of a domain name that substitutes one letter for another in a trademark does not distinguish the disputed domain name from the mark per Policy paragraph 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (changing a single letter is a minor enough change to support a finding of confusing similarity under Policy paragraph 4(a)(i)). In addition, adding a gTLD to a complainant's mark does not prevent a finding of confusing similarity under Policy paragraph 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy paragraph 4(a)(i) analysis). Respondent misspells Complainant's BWI Mark by substituting the letter "d" for the letter "b" in "bwi" to create "dwi". Therefore, the Panel concludes that the disputed domain name is confusingly similar to the BWI Mark.

 

The Panel also concludes that the disputed domain name is confusingly similar to Complainant's BWI Mark because it contains Complainant's trademark in its entirety, followed by the descriptive term "companies", and then followed by the gTLD ".com". The addition of a descriptive term does not prevent the disputed domain name from being deemed confusingly similar to the BWI Mark as long as the BWI Mark itself is recognizable. Finally, the addition of a descriptive term and a gTLD to a trademark is insufficient to distinguish a disputed domain name from a mark under Policy paragraph 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").

 

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.

 

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 paragraph 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 paragraph 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"). Here, the Panel holds that Complainant has made out a prima facie case.

 

The Panel agrees with Complainant's assertion that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BWI Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant aimed at defrauding Complainant and its customers. Respondent uses the disputed domain name to resolve to a website that mimics Complainant's website. The fraudulent use of the BWI Mark on Respondent's website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the BWI Mark or disputed domain name.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent's bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.

 

First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent's website or online location by creating a likelihood of confusion or a false association with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Second, the BWI Mark, which was used and registered by Complainant in advance of Respondent's registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant's rights in the BWI Mark and this constitutes bad faith under Policy paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its BWI Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant's trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).

 

Third, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) ("Typosquatting itself is evidence of relevant bad faith registration and use."). Here, Respondent engaged in typosquatting by substituting the letter "d" for the letter "b" in "bwi" (resulting in "dwi"). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy paragraph 4(a)(iii).

 

Fourth, Respondent registered and is using the disputed domain name in bad faith because Respondent made a general offer to sell the disputed domain name. A general offer for sale of a domain name incorporating the trademark of a third party can evince bad faith under Policy paragraph 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)."). Complainant provides a screenshot of the offer to sell the disputed domain name for USD 150k. Intent to sell a disputed domain name can be evidence of bad faith registration and use under Policy paragraph 4(b)(i) and attempting to sell the domain name in excess of the registrant's out-of-pocket costs suggests bad faith registration and use under Policy paragraph 4(b)(i). Respondent requested USD 150k for the sale of the disputed domain name, undoubtedly in excess of Respondent's out-of-pocket registration costs. Thus, the Panel finds that such conduct constitutes bad faith.

 

Finally, Complainant contends that Respondent has provided false contact information in connection with the registration of the disputed domain name, which in this case amounts to identity theft. Use of false contact information in registering a domain name can be evidence of bad faith registration per Policy paragraph 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). The Panel finds that Respondent used the name of a retired executive of Complainant as the registrant of the disputed domain name. Such use of this false information constitutes identity theft, emblematic of bad faith.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.

 

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 <dwicompanies.com> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Lynda M. Braun, Panelist

Dated: February 26, 2024