DECISION

 

Blick Art Materials, LLC v. hai hong

Claim Number: FA2404002092839

 

PARTIES

Complainant is Blick Art Materials, LLC ("Complainant"), represented by Thomas A. Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is hai hong ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blickdick.com>, registered with Name.com, Inc.

 

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.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 11, 2024; Forum received payment on April 11, 2024.

 

On April 12, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <blickdick.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.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 April 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@blickdick.com. Also on April 17, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On May 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

For more than a century since its founding in Galesburg, Illinois, Blick Art Materials, LLC and its predecessor entities ("Complainant" or "Dick Blick") have sold art supplies that cater to the full spectrum of artists, from children and students to well-known art professionals. Complainant also offers art materials and supplies, including paint, canvas and surfaces, brushes and painting tools, papers and boards, easels and furniture, frames and matboards, ceramics and sculpture materials, pottery glazes, and many more. Through its mail order catalogs, website, and more than 50 retail store locations, Complainant has enjoyed more than 10 million customer orders.

 

Complainant has long been known and referred to as both "Dick Blick" and "Blick."  Complainant has been identified as "DICK BLICK" and "BLICK" since long prior to Respondent's registration of the disputed domain name. Complainant uses <dickblick.com> for its primary website, which provides information about DICK BLICK and its DICK BLICK brand goods.  Complainant has received many awards and much recognition for its BLICK and DICK BLICK brand art supplies business.

 

Respondent registered the disputed domain name <blickdick.com> on January 3, 2024. Screenshots from the disputed domain name's website shows Respondent extensively using the DICK BLICK mark and purports to sell categories of art supplies identical to those sold at Complainant's website, including brushes and painting tools, easels apers and boards,

canvas and surfaces, supplies for furniture, frames, and sculpture and molding materials. This gives Respondent's website the appearance of being owned and operated by Complainant.

 

The "About Us" page of the disputed domain name website copies many elements of the "History" page of Complainant's website, including by identifying Dick Blick as the founder of the company. The similarities between Complainant's website and Respondent's domain name website give Respondent's website the appearance of being owned and operated by Complainant.

 

The Domain Name website purportedly offers Complainant's goods for sale. However, Complainant has reason to believe that orders placed through the Domain Name website are not fulfilled and that the Domain Name website was created for the purpose of misleading consumers and fraudulently obtaining credit card and other personal and financial information. The Domain Name website attempts to collect a user's name, email address, city, credit card, and other information.

 

The disputed domain name is confusingly similar to the Complainant's mark in that it simply reverses Complainant's DICK BLICK mark and adds the generic top-level domain.com. Respondent has no rights or legitimate interests in the disputed domain as it is attempting to pass itself off as Complainant or an authorized seller of Complainant's art supplies by prominently displaying Complainant's DICK BLICK trademark in connection with the purported offering for sale of the same types of goods sold by Complainant.  In addition, Respondent is not commonly known by the disputed domain name.

 

Respondent has registered and used the disputed domain name in bad faith. It had actual knowledge of Complainant's rights in the BLICK AND DICK BLICK marks which is demonstrated by Respondent's copying of the history of Complainant and biographies of Complainant's founders and staff members.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.        Complainant has rights in the BLICK and DICK BLICK marks based on its extensive use as well as several trademark registrations with the United States Patent and Trademark Office.

2.       The Respondent's disputed domain name is confusingly similar to the Complainant's BLICK and DICK BLICK marks.

3.       Respondent does not have rights or legitimate interests in and to the disputed domain name.

4.       Respondent registered and used the disputed domain name in bad faith by registering the disputed domain name with actual knowledge of the Complainant's rights in the marks and its use of the marks to pass itself off as that complainant and mislead consumers into believing that it is either the Complainant itself, or that it is affiliated, sponsored by, or endorsed by Complainant.

 

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 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the BLICK and DICK BLICK marks through Complainant's registration of the marks with the USPTO (e.g., Reg. No. 2,129,168 for DICK BLICK ART MATERIALS (which disclaims "art materials") and 2,726,039 for BLICK registered on January 13, 1998, and October 22, 2002, respectively).  See  Compl. Annex C.  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)."). Therefore, the Panel finds Complainant has demonstrated rights in the DICK BLICK and BLICK marks per Policy ¶ 4(a)(i).

 

The Disputed Domain Name, <blickdick.com> is confusingly similar to Complainant's mark as Respondent merely reverses the order of the words in DICK BLICK and adds a .com gTLD to the end of the mark.  Panels have consistently found the merely reversing the order of terms in a mark is insufficient to overcome  "confusingly similar" for purposes of the Policy. See SnagAJob.com, Inc. v. McLeod Capital Corp., FA 1239003 (Forum Feb. 10, 2009) (finding jobsnagger.com domain name confusingly similar because it "contains the main components of Complainant's SNAGAJOB.COM mark, reverses the order of those components, and merely adds the generic to-level domain ('gTLD') '.com.'") and See Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL).

 

Adding a TLD to a complainant's mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).").

 

Therefore, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In addition to demonstrating that the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Once that prima facie case is made, 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 ¶ 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.").

 

Complainant has met its burden in establishing a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

 

Complainant contends Respondent lacks rights or legitimate interests in the disputed  domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DICK BLICK or BLICK marks. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same).  In addition, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name (as contained in the Registrar's verification e-mail) lists the registrant as "Hai Hong".  The record contains no evidence that might otherwise tend to provide that the Respondent is either commonly known by the disputed domain name nor that it has any authorization to use the DICK BLICK or BLICK marks. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(iii) Respondent is not commonly known by the at-issue domain name.

 

Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent. Under Policy ¶¶ 4(c)(ii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per [UDRP] Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per [UDRP] Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business). Complainant provides screenshots of the disputed domain name's resolving website, which resolves to a site that prominently contains the Complainant's DICK BLICK mark and purports to sell the Complaint's art materials and supplies. In the "About Us" section of the website, Respondent clearly attempts to mislead end users into believing that it is in fact the Complainant. For example, it states: "Welcome to Dick Blick Art materials – Your Partner in Creativity" and uses the history of the actual DICK BLICK company as its own. Respondent's website claims "Founded by Dick Blick himself, the company quickly built a reputation for quality products made right here in the Midwest. . . . . But we'll never forget our Midwest roots and the values instilled by our founder over a century ago (emphasis added).".

 

In short, the evidence presented by Complainant clearly establishes that Respondent is attempting to impersonate and create a false connection with Complainant.  Panels have consistently held that blatant unauthorized use of a Complainant's marks is clear evidence that Respondent has no rights or legitimate interests in a disputed domain name.  See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant's website, Respondent had no rights or legitimate interests in the disputed domain name) and Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) ("Respondent's attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant, coupled with Respondent's failure to respond to the Complaint, is evidence that Respondent lacks rights or legitimate interests in the disputed domain name."). 

 

Registration and Use in Bad Faith

Under the UDRP, a Complainant must establish that the Respondent both registered and used the disputed domain name.

 

The Policy ¶ 4(b) provides a number of non-exclusive scenarios that constitute evidence of a respondent's bad faith.  Policy ¶¶ 4(b)(iii) and (iv) provide respectively that such evidence of use in bad faith could include:

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

Complainant provides sufficient evidence demonstrating that Respondent is attempting to pass itself off as, or otherwise impersonate, Complainant.  Respondent is using the domain name for an online retail store offering for sale art materials and supplies branded with, and advertised under, Complainant's DICK BLICK and BLICK marks.  Further, the website contains an "About Us" page that essentially copies the key events of Complainant's history.  Screenshots from the Respondent's website also show actual Complainant products being sold with a shopping cart experience that appears as if it is the Complainant itself taking and fulfilling orders made through the site. Respondent's website also contains the following notice in the footer of each of the pages:  "Copyright © 2024 Dick Blick. All rights reserved."  

 

As such, it is clear that not only did Respondent have actual knowledge of the Complainant's rights when it registered the disputed domain name, but also that Respondent was attempting to pass itself off as the Complainant to either sell the complainant's goods or potentially steal consumers personal and financial information.  This is direct evidence of bad faith under Policy ¶¶ 4(b)(iii) or (iv). See Boston Pizza Royalties Ltd. P'ship v. hook clerk, FA 2087651 (Forum Apr. 3, 2024) (finding "resolving website attempts to impersonate Complainant," thus evincing "bad faith registration and use under Policy ¶ 4(a)(iii)"); Chick-fil-A, Inc. v. Sameer ljaz, FA 2086949) (Forum Apr. 2, 2024) (finding bad faith because Respondent's domain name website was "dressed like it might be one of Complainant's official websites or a website sanctioned 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 <blickdick.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: May 20, 2024