national arbitration forum

 

DECISION

 

Move Collective LLC v. Ingenious Solutions ltd Ingenious Solutions ltd

Claim Number: FA1203001434827

 

PARTIES

Complainant is Move Collective LLC (“Complainant”), represented by Robert A. Lippman of Lemery Greisler LLC, New York, USA.  Respondent is Ingenious Solutions ltd Ingenious Solutions ltd (“Respondent”), Greece.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ewaterbobble.com>, registered with Wild West Domains, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2012; the National Arbitration Forum received payment on March 15, 2012.

 

On March 16, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <ewaterbobble.com> 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 March 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2012 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@ewaterbobble.com.  Also on March 20, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on April 4, 2012.

 

On April 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be cancelled.

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <ewaterbobble.com> domain name is confusingly similar to Complainant’s BOBBLE mark.

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

3.    Respondent registered or used the <ewaterbobble.com> domain name in bad faith.

           

B.   Respondent makes the following assertions:

1.    Respondent, Ingenious Solutions Ltd, is an Internet services company and is not selling any products.

2.    Respondent registered the domain name for its client’s company and all communications should be directed toward the client’s company.

3.    The disputed domain name has been removed until both companies find a solution to this case.

4.    The domain name focuses on the Greek market, as evidenced from the website.

5.    Both Complainant and Respondent’s client have a common interest to sell “bobble” products; the purpose of the disputed domain name is to sell Complainant’s products in the Greek market.

6.    Respondent’s client has purchased its products from the “distribution channel of Move Collective LLC.”

 

FINDINGS

    1. Complainant, Move Collective LLC, is the owner of the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):

                                          i.    BOBBLE MAKES WATER BETTER (Reg. No. 3,851,514 registered September 21, 2010); and

                                         ii.    BOBBLE (Reg. No. 3,992,585 registered July 12, 2011).

    1. The <ewaterbobble.com> domain name is both identical and confusingly similar to Complainant’s trademarks.
    2. Complainant owns the <waterbobble.com> domain name.
    3. Respondent has no rights or legitimate interests in the disputed domain name and has not been a dealer or reseller of Complainant’s goods.
    4. Respondent is using the disputed domain name to either sell Complainant’s goods obtained from the “grey market” or is selling counterfeit goods while holding them out to be Complainant’s goods.
    5. Respondent has used a copy of Complainant’s official website, which has been translated into Greek, to present itself as Complainant in order to sell its unauthorized or counterfeit goods.
    6. Respondent’s use of the domain name is intended to lure Complainant’s customers away from Complainant’s authorized dealers and sales agents for Respondent’s commercial gain.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant presents the Panel with trademark registrations with the USPTO for the BOBBLE MAKES WATER BETTER (Reg. No. 3,851,514 registered September 21, 2010) and BOBBLE marks (Reg. No. 3,992,585 registered July 12, 2011).  The Panel finds that these trademark registrations are sufficient for Complainant to establish rights in the marks under Policy ¶ 4(a)(i), regardless of Respondent’s geographic location.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant argues that the <ewaterbobble.com> domain name is both identical and confusingly similar to Complainant’s trademarks.  Complainant notes that the disputed domain name contains its entire BOBBLE mark, while adding the descriptive term “water” and the letter “e” as a prefix, which Complainant contends denotes “e-commerce” in the Internet world.  The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant, and finds that the domain name is confusingly similar to Complainant’s BOBBLE mark under Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Rights or Legitimate Interests

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent has not been authorized or licensed to use its mark or sell its goods.  The Panel notes that the WHOIS information identifies “Ingenious Solutions ltd Ingenious Solutions ltd” as the registrant, which the Panel finds is not similar to the <ewaterbobble.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon Complainant’s assertions and the WHOIS information on record.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant alleges that Respondent is using the disputed domain name to sell either Complainant’s goods that were procured illegally or counterfeit goods that are made to look like Complainant’s goods.  Complainant also notes that Respondent’s resolving website is an exact copy of Complainant’s official website that has been translated from English to Greek.  Therefore, Complainant contends that Respondent is not only selling counterfeit or unauthorized goods, but it is doing so while attempting to pass itself off as Complainant on the Internet.  The Panel agrees and finds that Respondent’s use of the domain name in such a manner is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nokia Corp.  v. Eagle,  FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

Further, the Panel finds that Respondent’s copying of Complainant’s website while selling goods that appear to be from Complainant constitutes passing off,  and also finds that such conduct is evidence of Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the disputed domain name, to operate a website that was copied from Complainant and to sell unauthorized or counterfeit versions of Complainant’s products, lures Complainant’s customers away from Complainant.  First, Complainant notes that it sells its products through authorized dealers and resellers and that Respondent is not one of them.  Second, Complainant argues that Respondent is selling Complainant’s goods in bad faith.  The Panel finds that Respondent’s use of the disputed domain name to sell unauthorized or counterfeit versions of Complainant’s products disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).  See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).

 

Further, Complainant argues that Respondent clearly commercially profits from its use of the disputed domain name by creating the impression that it is Complainant or, at the very least, it has been authorized or sponsored by Complainant in this endeavor.  Complainant notes again that Respondent has used a copy of Complainant’s website to effectuate its commercial use, having only translated the website into Greek.  The Panel finds that Respondent’s use of the disputed domain name at hand is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services).

 

The Panel finds that Respondent has attempted to pass itself off as Complainant through its use of an identical looking website.  The Panel finds that this also constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

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 <ewaterbobble.com> domain name be CANCELLED.

 

 

John J. Upchurch, Panelist

Dated:  May 11, 2012

 

 

 

 

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