BBK Tobacco & Foods, LLP dba HBI International v. Kimberly Ransom
Claim Number: FA2206002001457
Complainant is BBK Tobacco & Foods, LLP dba HBI International (“Complainant”), represented by Cindy A. Villanueva of Dickinson Wright PLLC, Arizona, USA. Respondent is Kimberly Ransom (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rawconesdirect.com>, registered with Namecheap Inc; NameCheap, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.
On June 23, 2022, Namecheap Inc; NameCheap, Inc. confirmed by e-mail to the Forum that the <rawconesdirect.com> domain name is registered with Namecheap Inc; NameCheap, Inc. and that Respondent is the current registrant of the name. Namecheap Inc; NameCheap, Inc. has verified that Respondent is bound by the Namecheap Inc; 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 June 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@rawconesdirect.com. Also on June 27, 2022, 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 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, BBK Tobacco & Foods, LLP dba HBI International, provides smoking products and related accessories, including cones for smoking. Complainant has rights in the RAW mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,989,221, registered Aug. 30, 2005). See Compl. Annex 5. The <rawconesdirect.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the descriptive word “cones,” the generic word “direct,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <rawconesdirect.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s RAW mark. Additionally, 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 because Respondent uses the disputed domain name to pass itself off as affiliated with Complainant.
Respondent has registered and uses the <rawconesdirect.com> domain name in bad faith because Respondent had constructive and actual knowledge of Complainant’s rights in the RAW mark prior to registering the disputed domain name. In addition, Respondent used a privacy service to hide its identity. Finally, Respondent’s registration of the domain name amounts to opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States limited liability partnership that provides smoking products and related accessories, including cones.
2. Complainant has established its rights in the RAW mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,989,221, registered Aug. 30, 2005).
3. Respondent registered the <rawconesdirect.com> domain name on January 28, 2022.
4. Respondent uses the disputed domain name to pass itself off as affiliated with Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the RAW mark based on registration of the mark with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a 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).”). Here, Complainant provides evidence of its registration with the USPTO for the RAW mark (e.g., 2,989,221, registered Aug. 30, 2005). See Compl. Annex 5. Therefore, the Panel finds that Complainant has rights in the RAW mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RAW mark. Complainant argues that the <rawconesdirect.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the descriptive word “cones,” the generic word “direct,” and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding additional terms, whether generic or descriptive, may not create a sufficient distinction. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Here, Respondent has made the changes identified above and these changes do not create a sufficient distinction between the disputed domain name and Complainant’s RAW mark. The addition of the word “cones” adds to the confusing similarity as it references one of Complainant’s products—cones for smoking. In addition, the word “direct” further suggests that a consumer can purchase cones “direct”, as in directly, from Respondent via its webpage and that the cones so purchased will be Complainant’s official RAW products. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s RAW mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), 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 ¶ 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”).
(a) Respondent has chosen to take Complainant’s RAW mark and to use it in its domain name adding the descriptive word “cones” and the generic word “direct” to the mark;
(b) Respondent registered the domain name on January 28, 2022;
(c) Respondent uses the disputed domain name to pass itself of as Complainant and to offer to potential purchasers cones for smoking and to claim falsely that its products are Complainant’s official RAW products;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <rawconesdirect.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s RAW mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <rawconesdirect.com> and no information suggests Complainant authorized Respondent to use the RAW mark. Rather, the Registrar identified the registrant of the domain as “Kimberly Ransom.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <rawconesdirect.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass itself off as affiliated with the complainant. 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 Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per 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). Here, the disputed domain name is not sufficiently distinct from Complainant’s RAW mark and to the contrary it is clearly an invitation to buy products sold by Complainant under its RAW mark and directly from Complainant. In addition, the resolving webpage displays Complainant’s RAW mark and advertises smoking products that directly compete with Complainant’s. In fact, the get-up of the page is clearly designed to invoke Complainant and its trademark and products. See Compl. Annex 22. Therefore, the Panel finds that Respondent has failed to show that it has used the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that although Complainant does not make any arguments under Policy ¶ 4(b), the Panel may look beyond the specific provisions of Policy ¶ 4(b) to view the totality of the circumstances when analyzing the issue of bad faith. The Panel may properly look to circumstances which fall under Policy ¶ 4(a)(iii) to find bad faith if they are made out.
Secondly, Complainant argues that Respondent has registered and uses the <rawconesdirect.com> domain in bad faith because it used a privacy service to shield its identity which can be evidence of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, WHOIS information lists the registrant of the disputed domain as “Redacted for Privacy/Privacy service provided by withheld for Privacy ehf.” See Compl. Annex 2. Only later did the Registrar identify Respondent as “Kimberly Ransom.” See Registrar Verification Email. Therefore, as the Panel agrees, it finds that Respondent has registered and uses the disputed domain in bad faith.
Thirdly, Complainant contends that Respondent’s registration of the <rawconesdirect.com> domain amounts to opportunistic bad faith. Previous panels have considered the fame of the mark incorporated in the disputed domain name when determining if opportunistic bad faith is present. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Here, Complainant argues that given the fame of the RAW mark it is implausible that Respondent registered the disputed domain name incorporating the full RAW mark in good faith. Therefore, as the Panel agrees, it finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the RAW mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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 <rawconesdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 26, 2022
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