DECISION

 

Jennifer Barbosa v. Serhii Bulhakov

Claim Number: FA2404002093787

 

PARTIES

Complainant is Jennifer Barbosa ("Complainant"), represented by Sarah S. Brooks of Venable LLP, California, USA. Respondent is Serhii Bulhakov ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barbosaforcongress.com>, registered with NameCheap, 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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

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

 

On April 18, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <barbosaforcongress.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@barbosaforcongress.com. Also on April 19, 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 10, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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

Complainant

1.       Respondent's <barbosaforcongress.com> domain name is confusingly similar to Complainant's BARBOSA FOR CONGRESS mark.

 

2.       Respondent does not have any rights or legitimate interests in the <barbosaforcongress.com> domain name.

 

3.       Respondent registered and uses the <barbosaforcongress.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant claims common law rights in the BARBOSA FOR CONGRESS mark, used in 2019 and 2020 in connection with running for the U.S. House of Representatives. Complainant widely used the <barbosaforcongress.com> domain name until after her 2020 campaign.

 

Respondent registered the <barbosaforcongress.com> domain name on July 28, 2022, and uses it to pass off as 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 claims that it has common law rights in the BARBOSA FOR CONGRESS mark. Complainant provides evidence demonstrating that the BARBOSA FOR CONGRESS mark was widely used and widely recognized during her 2019 and 2020 Congressional campaign. In the absence of any assertion to the contrary, the Panel finds that Complainant has common law rights in the BARBOSA FOR CONGRESS mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising."); see also Indianapolis Downs, LLC v. Philip Mazzone, FA 1244694 (Forum Mar. 11, 2009) ("Policy ¶ 4(a)(i) does not require proof of a registered trademark if Complainant can demonstrate its common law rights through secondary meaning.")

 

Respondent's <barbosaforcongress.com> domain name uses Complainant's exact BARBOSA FOR CONGRESS mark and simply adds the ".com" gTLD, duplicating the domain name previously used by Complainant. The Panel finds that Respondent's <barbosaforcongress.com> domain name is identical to Complainant's BARBOSA FOR CONGRESS mark. See Broadnet Teleservices, LLC v. Sun, Michael, FA 1625931 (Forum July 23, 2015) ("[T]he addition of a generic gTLD does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent has no rights or legitimate interests in the <barbosaforcongress.com> domain name as Respondent is not commonly known by the domain name. Complainant has not given Respondent permission to use its BARBOSA FOR CONGRESS mark in the disputed domain name. The WHOIS identifies "Serhii Bulhakov" as the registrant.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights 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); see also Navistar International Corporation v. N Rahmany, FA 1620789 (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). 

 

Complainant argues that Respondent does not use the <barbosaforcongress.com> domain name for a bona fide offering of goods or service or a legitimate noncommercial or fair use by using it to pass off as Complainant. Complainant provides a screenshot of the website at the disputed domain name, showing that Respondent copies Complainant's website, including Complainant's mark and images and a link to "CLICK HERE TO DONATE". The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See We Are Luxe Ltd. v. RuiYuan Guo / WuHanHuangHangWangLuoKeJiYouXianGongSi, FA 2074336 (Forum Jan. 5, 2024) (holding that cloning complainant's website was deceptive and could not amount to the bona fide offering of goods and services); see also ALC IP Holdings, LLC v. Registration Private, FA 2068317 (Forum Dec. 2, 2023) (holding that cloning complainant's website could not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that Respondent registered and uses the <barbosaforcongress.com> domain name in bad faith under Policy ¶ 4(b)(iv) to pass off as Complainant for Respondent's commercial gain. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.") The Panel thus finds bad faith. 

 

Complainant claims that Respondent registered the disputed domain name with knowledge of Complainant's rights in the BARBOSA FOR CONGRESS mark based on Respondent's use of the mark to pass off as Complainant. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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

 

 

Sandra J. Franklin, Panelist

Dated: May 12, 2024