BBY Solutions, Inc. v. sefsef sefsef
Claim Number: FA2112001978078
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is sefsef sefsef (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbuygiftcardbalance.net>, registered with Wild West Domains, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2021; the Forum received payment on December 22, 2021.
On December 23, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <bestbuygiftcardbalance.net> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 December 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022 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@bestbuygiftcardbalance.net. Also on December 27, 2021, 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 January 19, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the BEST BUY mark established by its ownership of its portfolio of service mark registrations listed below for which it has provided copies of its registration certificates annexed to the Complaint.
Complainant also asserts that it has acquired protectible rights in its BEST BUY mark by continuous use by Complainant, its predecessors in title and affiliated companies, since at least as early as 1989 as it is one of the largest online retailers in the world, adding that it has offered retail services through its website to which its <bestbuy.com> domain name resolves for over two decades.
Complainant specifically asserts in the context of this Complaint, that it has long offered gift cards that are supplied in a variety of styles and connote different events such as birthdays and holidays.
Alleging that the disputed domain name is identical or confusingly similar to the BEST BUY trademark in which it has rights, Complainant asserts that its ownership of the valid trademark registrations listed below suffice to establish is rights for the purposes of this Complainant under the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Complainant notes that the disputed domain name incorporates its BEST BUY mark in its entirety and includes the descriptive phrase “gift card balance”, and submits that numerous panels established under the Policy have reasoned that where “a disputed domain name contains Complainant’s entire trademark and differs only by the addition of a generic or descriptive phrase and top-level domain name, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.” Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and the WHOIS record for the disputed domain name lists “Registration Private” and “Domains By Proxy, LLC” as the “Registrant Name” and “Registrant Organization”.
Complainant contends that Respondent appears to be using a proxy service or otherwise masking its identity and argues that in any case, Complainant has no relationship with Respondent and did not authorize Respondent’s registration of the disputed domain name or use Complainant’s BEST BUY mark in any manner and argues that Respondent thus lacks rights or a legitimate interest in the disputed domain name. See Emerson Electric Co. v. Golden Humble / Golden Globals, FA 1787128 (Forum June 11, 2018) (“[L]ack 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 Policy ¶ 4(c)(ii)”).
Referring to screen captures of the website to which the disputed domain name resolves, which have been annexed to the Complaint, Complainant adds that moreover, Respondent appears to be using the disputed domain name to divert consumers searching for Complainant into taking surveys—a form of phishing scam.
The screen captures of the website show illustrations of purported BEST BUY branded gift cards, which include a depiction of the BEST BUY & tag design logo which is one of Complainant’s registered service marks. The BEST BUY & tag design logo is also shown sandwiched between the following text: “DO YOU WANT SOME BEST BUY GIVEAWAY GIFT CARDS” and “Get Best Buy Gift Card code and redeem for anything in the Best Buy Store.”
Below that text, viewers can click on other illustrations of Complainant’s BEST BUY gift cards, which also leads to a loading screen, again depicting Complainant’s BEST BUY & tag design logo. Once the loading screen is finished, another screen directs consumers to take surveys in exchange for gift cards. That screen also shows Complainant’s BEST BUY & tag design logo.
Complainant argues that such use does not support rights or a legitimate interest in the domain. See Nordstrom, Inc. and NIHC, Inc. v. Private Registration, FA1602001660239 (Forum March 11, 2016) (“In addition, the <nordstromscard.com> disputed domain name redirects Internet traffic to a site used in connection with a survey. This survey serves as a scheme to ‘phish’ for Internet users’ personal information. . . . The Panel finds that schemes to phish for Internet user information weighs heavily against finding rights for a Respondent.”).
Alleging that the disputed domain name was registered and is being used in bad faith, Complainant submits that Respondent cannot deny that had full knowledge of Complainant and its rights when it registered the disputed domain name because the disputed domain name subsumes Complainant’s BEST BUY mark in its entirety, adding only a descriptive phrase,
Complainant submits that such use of Complainant’s mark in the disputed domain name shows that Respondent intends to confuse consumers and constitutes evidence of bad faith. See, e.g., Bloomberg Finance L.P. v. Privacy Protection, FA 2109001967145 (Forum Nov. 2, 2021) (bad faith found in registration of <bloombergbtc.com> where “Complainant operates one of the largest and most well-known financial news organizations in the world, and Respondent registered a domain name with the entirety of the BLOOMBERG mark, adding the related acronym ‘BTC’ [to refer to bitcoin]”).
Again referring to the screen captures of the web pages to which the disputed domain name resolves, Complainant argues that Respondent is using the disputed domain in bad faith in connection with a form of phishing scam, i.e. by diverting consumers into taking surveys for other brands unrelated to Complainant.
Complainant contends that in so doing, Respondent has misappropriated Complainant’s BEST BUY marks, including the registered BEST BUY & tag design logo, which is depicted numerous times on the website at the disputed domain, and argues that these actions evidence that Respondent is consciously trying to exploit the goodwill in the BEST BUY marks by associating itself to Complainant when no such association exists.
Given those circumstances and the use the disputed domain name to divert consumers for surveys unrelated to Complaint, Complainant alleges that there seems little question that Respondent is using the disputed domain in connection with a phishing scam, and thus in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the largest retailers in North America, and is the owner of the BEST BUY mark for which it owns a large portfolio of trademark and service mark registrations including:
· United States of America service mark BEST BUY. registration number 3416626, registered on the Principal Register on April 29, 2008, for services in international class 35;
· United States of America service mark BEST BUY & tag design registration number 4391487, registered on the Principal Register on August 27, 2013, for services in international class 35;
· United States of America service mark BEST BUY & tag design registration number 4395410, registered on the Principal Register on September 3, 2013, for services in international class 35;
· United States of America trademark MY BEST BUY & tag design registration number 4549236 registered on the Principal Register on June 10, 2014 for services in international class 35;
· United States of America service mark BEST BUY & tag design registration number 5870960 registered on the Principal Register on October 1, 2019, for services in international class 35;
· United States of America service mark BEST BUY & tag design registration number 5870962 registered on the Principal Register on October 1, 2019, for services in international class 35;
· United States of America service mark BEST BUY & tag design registration number 5870966, registered on the Principal Register on October 1, 2019 for services in international class 35;
· United States of America service mark BESTBUY.COM. registration number 2638360 registered on the Principal Register on October 22, 2002 for services in international classes 37, 37 and 42.
Complainant has an established Internet presence, and its online sales are offered thought its website at <https://www.bestbuy.com/>.
The record shows that the disputed domain name was registered on June 7, 2021 and resolves to a website that purports to prominently offer Complainant’s gift cards for sale, while prominently displaying Complainant’s BEST BUY & tag design logo, and less prominently to offers gift cards from a number of other retailers.
There is no information available about Respondent, who availed of a privacy service to conceal his/her identity on the published WhoIs, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The Registrar confirmed to the Forum that Respondent is the current registrant of the disputed domain name.
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 provided convincing evidence that it has rights in the BEST BUY mark established by its ownership of the trademark and service mark registrations described above and its extensive use of the mark in relation to its retail business including online.
The disputed domain name <bestbuygiftcardbalance.net> consists of Complainant’s BEST BUY mark and the words “gift”, “card” and “balance” in combination with the generic Top Level Domain (“”gTLD”) extension <.net>.
Complainant’s BEST BUY mark Is the initial element identifiable within the disputed domain name and the other elements add no distinguishing element to the disputed domain name.
In the circumstances of this proceeding, the gTLD extension <.net> would be considered by Internet users as a necessary technical requirement for a domain name.
As it is well recognized that panels established under the Policy apply a low bar to the first element of the test in Policy ¶ 4(a)(i) and given that the disputed domain name contains Complainant’s mark in its entirety, this Panel finds that the disputed domain name is confusingly similar to the BEST BUY mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· the WHOIS record for the disputed domain name lists “Registration Private” and “Domains By Proxy, LLC” as the “Registrant Name” and “Registrant Organization”;
· Respondent appears to be using a proxy service or otherwise masking its identity;
· Complainant has no relationship with Respondent;
· Complainant did not authorize Respondent’s registration of the disputed domain name or use Complainant’s BEST BUY mark in any manner;
· The screen captures of the website to which the disputed domain name resolves, which have been annexed to the Complaint, appear to show Respondent to be using the disputed domain name to divert consumers searching for Complainant enticing them to take surveys which is indicative of a phishing scam;
· the website content contains illustrations of what purport to be Complainant’s BEST BUY branded gift cards;
· the webpages include a depiction of the BEST BUY logo which is one of Complainant’s registered service marks;
· Complainant’s logo is also shown sandwiched between the following text: “DO YOU WANT SOME BEST BUY GIVEAWAY GIFT CARDS” and “Get Best Buy Gift Card code and redeem for anything in the Best Buy Store.” Below that text, viewers can click on other illustrations of Complainant’s gift cards, which leads to a loading screen, again depicting Complainant’s BEST BUY logo. Once the screen loads, another screen directs consumers to take surveys in exchange for gift cards. That screen also displays Complainant’s BEST BUY logo. Complainant alleges that such use does not support rights or a legitimate interest in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel accepts Complainant’s submissions that the registrant of the disputed domain name, on the balance of probabilities was aware of Complainant and its rights when the disputed domain name was registered.
While the words “best buy” are in themselves descriptive, Complainant has a long and strong reputation in its use of the BEST BUY mark. The registrant of the disputed domain name, on the balance of probabilities intended that the combination of the BEST BUY mark, with the concepts “gift card” and “balance” to be a direct reference to Complainant as well as the gift card services that it provides.
In the absence of any other explanation, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith to make reference to Complainant, its mark and business with the intention of creating confusion among consumers,
This finding is further supported by the evidence adduced by Complainant of the manner in which the disputed domain name is being used by Respondent.
The screen captures of the web pages to which the disputed domain name resolves, show that the Internet visitor arriving at Respondent’s website is met with images purporting to be Complainant’s gift cards with Complainant’s BEST BUY & tag design logo as well as text such as “Get Best Buy Gift Card code and redeem for anything in the Best Buy Store.”
This content is clearly intended to be a reference to Complainant, particularly as Complainant’s BEST BUY & tag design logo is prominently displayed throughout the pages that have been submitted in evidence.
Visitors to Respondent’s website are also invited to avail of offers of savings and unlocking content by completing a number of steps in an application process. The website states that to claim a reword an Internet visitor is required to complete a specified number of “deals” which requires ID verification and that “[it] typically takes our customer service team 5-7 days to verify and deliver your Reward”.
While this does not prove Complainant’s allegation that Respondent is engaged in a phishing process, it is indicative of such activity, particularly as Complainant’s assertion that is has no business connection will Respondent.
Significantly the evidence adduced shows that Respondent is also advertising gift cards of a third party, which is another large North American, retail chain. There is no evidence that it has any connection with the competing retail chain, and given the evidence adduced, it is most improbable that any connection exists.
Respondent’s use of the disputed domain name that incorporates Complainant’s mark in its entirety with a reference to “gift card” services provided by Complainant, and the above-described content of the website to which it resolves, creates a strong impression that Respondent has some connection with Complainant, while also purporting to offer Internet visitors inducement to purchase “deals” from a competitor of Complainant. This supports the finding that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her web site or location or of a product or service on his/her web site or location.
In uncontested evidence therefore, Complainant has shown that on the balance of probabilities the disputed domain name has been used in bad faith.
As this Panel has found that the disputed domain name was registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <bestbuygiftcardbalance.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 21, 2022
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