BBY Solutions, Inc. v osi ben / express wireless
Claim Number: FA1411001589081
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota. Respondent is osi ben / express wireless (“Respondent”), Pennsylvania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbuygsm.com>, registered with Register.com, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2014; the National Arbitration Forum received payment on November 7, 2014.
On November 10, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestbuygsm.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 November 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 1, 2014 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@bestbuygsm.com. Also on November 10, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 uses BEST BUY to identify its sale of electronic goods and other consumer products both in BEST BUY stores and through the Internet. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,676,112, registered February 18, 1992). The <bestbuygsm.com> domain name takes the entire mark and adds the acronym “gsm” (Global System for Mobile communications), and the gTLD “.com.”
Respondent has no rights or legitimate interests in this domain name. Respondent is not commonly known by the domain name and has no authority to use the BEST BUY mark in domain names. Respondent is using the <bestbuygsm.com> domain name to host a website where competing services are offered to the public.
Respondent registered and is using the <bestbuygsm.com> domain name in bad faith. Respondent is profiting from a likelihood of Internet users confusion as to the association of the BEST BUY mark with the <bestbuygsm.com> domain name. Further, Respondent had to have had constructive or actual knowledge of Complainant’s rights prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the sale of electronic goods and other consumer products both in BEST BUY stores and through the Internet.
2. Complainant owns the BEST BUY trademark that has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,676,112, registered February 18, 1992).
3. The <bestbuygsm.com> domain name was registered February 4, 2008.
4. Respondent is using the <bestbuygsm.com> domain name to host a website where competing services are offered to the public.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses BEST BUY to identify its sale of electronic goods and other consumer products both in BEST BUY stores and through the Internet. The mark has been registered with the USPTO (e.g., Reg. No. 1,676,112, registered February 18, 1992). This Panel agrees here that the BEST BUY trademark registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BEST BUY mark.Complainant argues that the <bestbuygsm.com> domain name takes the entire mark and adds the acronym “gsm” (Global System for Mobile communications), and the gTLD “.com.” The Panel agrees that adding a descriptive acronym, and the gTLD, is not enough to avoid the confusing similarity inherent in this domain name.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”).
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), 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BEST BUY mark and to use it in its domain name and has simply added the expression “gsm” which suggests that the domain name is an official domain name of Complainant referring to the business of Complainant in the field of Global System for Mobile communications;
(b)Respondent has been using the <bestbuygsm.com> domain name to host a website where competing services are offered to the public;
(c) Respondent has been engaging in these activities without the knowledge or approval of Complainant;
(d)Complainant argues that Respondent is not commonly known by the domain name and has no authority to use the BEST BUY mark in a domain name. The Pane notes that “osi ben / express wireless” is listed as the registrant of record for the disputed domain name. The Pane concludes that nothing in the record supports a finding that Respondent is commonly known as this domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
(e)Complainant further argues that Respondent is using the <bestbuygsm.com> domain name to host a website where competing services are offered to the public. The Panel notes how the domain name resolves to a website claiming to be the home of “Best Buy GSM.” See Compl., at Attached Ex. G. The Panel agrees that such an attempt at passing off is not a bona fide offering under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 has no rights or legitimate interests 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, Complainant submits that Respondent is profiting from a likelihood of Internet users confusion as to the association of the BEST BUY mark with the <bestbuygsm.com> domain name. The Panel again notes how Respondent purports to offer “Best Buy” services on the domain name’s website. See Compl., at Attached Ex. G. The Panel finds that such an assertion is misleading and suggestive of Policy ¶ 4(b)(iv) bad faith through profiting on a likelihood of confusion. See, e.g., Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Secondly, Complainant argues that Respondent had to have had constructive or actual knowledge of Complainant’s rights prior to registering the domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant's YAHOO! mark at the time of registration”).
Thirdly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed
<eaglecreekkorea.com> domain name using the EAGLE CREEK mark, 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestbuygsm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 12, 2014
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