Boho Brands LLC v. DOMAIN MAYBE FOR SALE / Cyan Yo
Claim Number: FA2005001898365
Complainant is Boho Brands LLC (“Complainant”), represented by Edmond DeFrank, United States. Respondent is DOMAIN MAYBE FOR SALE / Cyan Yo (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <blkperiod.com>, <oscuromezcal.com>, <tastewithbenefits.com>, and <longnosegin.com>, registered with Dynadot, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2020; the Forum received payment on May 30, 2020.
On June 3, 2020, Dynadot, Llc confirmed by e-mail to the Forum that the <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <blkperiod.com>, <oscuromezcal.com>, <tastewithbenefits.com>, <longnosegin.com> domain names are registered with Dynadot, Llc and that Respondent is the current registrant of the names. Dynadot, Llc has verified that Respondent is bound by the Dynadot, 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 June 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@xilotequila.com, postmaster@harlyhops.com, postmaster@zoyavodka.com, postmaster@sablevodka.com, postmaster@blkperiod.com, postmaster@oscuromezcal.com, postmaster@tastewithbenefits.com, postmaster@longnosegin.com. Also on June 10, 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 July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the two entities that are identified in the WHOIS records for the multiple disputed domain names are effectively controlled by the same person and/or entity, which is operating under certain aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” See, e.g., Oportun, Inc. v. Domain Admin / Whois Privacy Corp., FA 1872675 (Forum Jan. 12, 2020) (multiple Respondent’s consolidated into a single case where the disputed domain names displayed some similarities in WHOIS information, were held at the same registrar, and resolved to similar website). Here, Complainant points out that, despite the Registrant name being identified as “DOMAIN MAYBE FOR SALE” and “Cyan Yo”, the WHOIS records for all of the disputed domain names list the identical Registrant’s email address of “blazingdot@gmail.com”. It then asserts that “this indicates that there is only one person named Cyan Yo, who is doing business both in his name and a business name of DOMAIN MAYBE FOR SALE” and that “the domain names in dispute in this complaint are owned and controlled by the same person.” The Panel notes that each of the disputed domain names are registered using the same registrar and list the same email address in their WHOIS records. Further, each of the disputed domain names resolve to similar websites displaying offers to sell the domain names. As the Respondent has not participated in these proceedings it has not contested the Complainant’s assertions and so the Panel finds it appropriate to continue this case against both of the named Respondents as a single domain name holder.
A. Complainant
Complainant, Boho LLC, is an alcohol beverage company. Complainant has rights in the trademark BLK. based upon its registration thereof with the United States Patent and Trademark Office (“USPTO”) on February 26, 2019 (the “BLK. Mark”). Complainant further claims rights in the following trademarks as these are currently the subject of pending applications: XILO, XILO TEQUILA, HARLY HOPS, ZOYA VODKA, SABLE VODKA, BLK PERIOD, OSCURO MEZCAL, TASTE WITH BENEFITS, and LONG NOSE GIN which have been filed at the USPTO on various dates ranging between November 22, 2019 and February 26, 2020 (collectively referred to as the “Pending Marks”). Respondent’s disputed domains names, registered on various dates between November 26, 2019 and February 29, 2020, are confusingly similar to one or more of Complainant’s asserted trademarks, as the domain names incorporate such marks in their entirety and simply add the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use any of Complainant’s trademarks in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent makes no active use of the disputed domain names, besides offering them for sale.
Respondent registered and is using the disputed domain names in bad faith. Respondent offers the disputed domain names for sale and has also engaged in a pattern of bad faith registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
With respect to the <blkperiod.com> domain name, the Panel finds as follows:
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
With respect to the <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <oscuromezcal.com>, <tastewithbenefits.com>, and <longnosegin.com> domain names, the Panel finds that the Complainant has failed to demonstrate that it has rights in a trademark to which the respective domain name is confusingly similar.
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 BLK. mark based upon its registration thereof with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the BLK. mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i).
Complainant also claims that it has rights in the XILO, XILO TEQUILA, HARLY HOPS, ZOYA VODKA, SABLE VODKA, BLK PERIOD, OSCURO MEZCAL, TASTE WITH BENEFITS, and LONG NOSE GIN marks based upon its pending intent-to-use trademark applications at the USPTO. The Panel notes that screenshots of the USPTO website that were submitted into evidence by Complainant show only limited information and none of them display the name of the trademark Applicant. In any event, pending trademark applications have, alone, been held not to satisfy the requirement of Policy ¶ 4(a)(i) for a showing of “a trademark or service mark in which the complainant has rights”. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”) While some decisions have found bad faith registration under Policy ¶ 4(a)(iii) in anticipation of the existence of trademark rights, even in those cases the claimed rights had come to fruition at the time that a complaint was filed under the Policy. See, e.g., Khloe Kardashian, Whalerock Celebrity Subscription, LLC, Khlomoney, Inc. v. Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc. d/b/a Privacyprotect.Org, D2015-1113 (WIPO Aug. 14, 2015) (“The Domain Name was registered just two weeks after Ms. Kardashian first appeared on the show” leaving “little doubt that the Respondent must have had the Complainant and its rights in the KHLOE KARDASHIAN name in mind when it registered the Domain Name.”). Here, no registrations have yet issued for the Pending Marks and Complainant submits no evidence that it owned common-law rights to such marks at the time that the Complaint was filed. As Complainant has failed to meet the threshold of Policy ¶ 4(a)(i) with regard to the Pending Marks, the Panel is unable to and declines to proceed further in this case with respect to the <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <oscuromezcal.com>, <tastewithbenefits.com>, and <longnosegin.com> domain names.
Complainant next argues that Respondent’s <blkperiod.com> domain name is confusingly similar to the BLK. Mark, as the name incorporates a substantial portion of such mark and simply adds the word “period”, a spelled-out descriptor for the period punctuation character that appears in the BLK. Mark. Finally, Respondent adds the “.com” gTLD to arrive at the full <blkperiod.com>domain name. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Google Inc. v. Milan Kovac, FA 1391350 (Forum July 14, 2011) (“the domain name consists of Complainant’s mark combined with the generic term ‘dot’ and the generic top-level domain (‘gTLD’) ‘.com.’ … The Panel therefore finds that Respondent’s <googledot.com> domain name is confusingly similar to Complainant’s GOOGLE mark.”). In light of the available evidence, the Panel here determines that the <blkperiod.com> domain name is confusingly similar to the BLK. Mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 argues that Respondent has no rights or legitimate interests in the <blkperiod.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BLK. Mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the <blkperiod.com> domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record for the <blkperiod.com> domain name identifies the registrant as “DOMAIN MAYBE FOR SALE” and no information of record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s BLK. Mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
Complainant also asserts that Respondent’s inactive holding of the <blkperiod.com> domain name indicates that it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends that Respondent’s <blkperiod.com> domain name does not resolve to an active websute itself but, rather, redirects users to a third-party website at which the domain name is offered for sale to the public. Such general offer for sale also does not constitute a bona fide use where the disputed domain name is confusingly similar to a trademark in which the complainant has rights. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name.) As no Reply or other submission has been made by Respondent, upon a preponderance of the evidence available in this case, the Panel finds that Respondent does not have rights or legitimate interests in the <blkperiod.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its BLK. Mark at the time it registered the <blkperiod.com> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) While Complainant submits a copy of its USPTO registration certificate for the BLK. Mark, such evidence, alone, typically does not support the conclusion that a domain name registrant actually knew of the mark at the time a disputed domain name was registered. UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") Furthermore, Complainant submits no evidence regarding the actual use, scope, or reputation of its BLK. Mark. However, Complainant does note that Respondent has registered a series of domain names based on various trademarks for which Complainant has filed USPTO applications (the Pending Marks) and that, in each instance, these domain names were registered within three to four days of Complainant having filed its corresponding trademark application. This series of domain name registrations indicates that the <blkperiod.com> domain name was not merely registerd as a random and innocent act but that the Respondent had knowledge of, and was carefully monitoring Complainant’s trademark applciations to specifically target its brands.
Next, Complainant contends that Respondent’s only purpose in registering the <blkperiod.com> domain name was to gain commercially from the sale of the same, thus supporting a conclusion that its registration and use of the name is in bad faith. A general offer to sell a domain name that is confusingly similar to an asserted trademark can be evidence that the respondent intended to make such an offer at the time that it registered the name, thus supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant asserts that Respondent’s current offer to sell the <blkperiod.com> domain name evidences Respondent’s purpose in registering and using the domain name, i.e., to sell it for a profit based upon a likelihood of confusion with the BLK. Mark. The Respondent has not disputed this or otherwise participated in this case and so the Panel finds, by a preponderance of the evidence in this case, that Respondent registered and used the <blkperiod.com> domain names in bad faith per Policy ¶ 4(b)(i) by offering it for sale to the general public.
Finally, Complainant contends that Respondent’s registration of the <blkperiod.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of multiple registrations targeting a specific complainant, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Ditec International AB / Global Preservation Systems, LLC v. ADAM FARRAR / HOSTGATOR / FRITS VERGOOSSEN / DITEC INTERNATIONAL CORPORATION / Christopher Alison, FA 1763998 (Forum Feb. 1, 2018) (“Here, Respondent registered six domain names that all include Complainant’s DITEC mark. Therefore, the Panel finds that Respondent’s multiple registrations using the DITEC mark indicates bad faith registration and use per Policy ¶ 4(b)(ii).”) Complainant argues that Respondent makes a habit of targeting a number of Complainant’s registered (BLK. Mark) and applied-for (Pending Marks) trademarks to register the various domain names complained of in this case. Complainant contends that Respondent’s registration of these disputed domain names within mere days of Respondent’s filing of the respective trademark applications indicates a pattern of bad faith activity. While the Respondent’s actions are highly suspicious, since bad faith with respect to the <blkperiod.com> domain name has already been found on other grounds, the Panel declines to decide the question of whether the remaining disputed domain names are part of a pattern of Respondent’s bad faith per Policy ¶ 4(b)(ii).
With respect to the <blkperiod.com> domain name, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
With respect to the <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <oscuromezcal.com>, <tastewithbenefits.com>, and <longnosegin.com> domain names, having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blkperiod.com> domain name be TRANSFERRED from Respondent to Complainant and that the <xilotequila.com>, <harlyhops.com>, <zoyavodka.com>, <sablevodka.com>, <oscuromezcal.com>, <tastewithbenefits.com>, and <longnosegin.com> domain names REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: July 8, 2020
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