BILD Gmbh & Co. KG v. James Cousin
Claim Number: FA1510001641283
Complainant is BILD Gmbh & Co. KG (“Complainant”), represented by Robert Heine of Raue LLP, Germany. Respondent is James Cousin (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bildpl.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 7, 2015; the Forum received payment on October 7, 2015.
On October 7, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bildpl.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2015 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@bildpl.us. Also on October 8, 2015, 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 November 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶4(a)(i)
Complainant has rights in the BILDPLUS mark through its registration with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 011381787, registered on January 9, 2014). Respondent’s <bildpl.us> domain name is identical or confusingly similar to the BILDPLUS mark because it contains the entire mark, differentiated by only a period between two of the letters (“L” and “U”) of the mark.
Policy ¶4(a)(ii)
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the <bildpl.us> domain name and has made no showing of ownership of a mark identical to the domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is designed to pass itself off as Complainant.
Policy ¶4(a)(iii)
Respondent registered and used the disputed domain name in bad faith. Respondent uses the <bildpl.us> domain name in bad faith because it operates the resolving website in a manner designed to attract Internet users for commercial gain by impersonating Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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.”).
Complainant claims rights in the BILDPLUS mark through its registration with the OHIM (Reg. No. 011381787, registered on January 9, 2014). Registration of a trademark with the OHIM (or other governmental authority) adequately demonstrates rights in a mark under Policy ¶4(a)(i). See Dun & Bradstreet Corp. v. Host Master, FA 1280137 (Nat. Arb. Forum Oct. 6, 2009) (concluding complainant’s evidence of trademark registrations with the OHIM “is sufficient to establish Complainant’s rights in the www.dnb.com and dnb.com marks for purposes of Policy ¶4(a)(i)”). Complainant has rights in the BILDPLUS mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <bildpl.us> domain name is identical or confusingly similar to the BILDPLUS mark because it contains the entire mark, differentiated by only a period between two of the letters of the mark. A TLD (whether a ccTLD or a gTLD) must be ignored while determining whether a domain name is confusingly similar to a mark under Policy ¶4(a)(i). See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”); see also Securian Fin. Grp., Inc. v. me s / enom, FA 1595614 (Nat. Arb. Forum Jan. 16, 2015) (“as the <minnesota.life> domain name is comprised of the MINNESOTA LIFE mark with the insertion of a period in place of the space between the two-word mark such that the domain name retains identity to the mark, the Panel determines that the domain name is confusingly similar to the mark pursuant to Policy ¶4(a)(i).”). Respondent’s <bildpl.us> domain name is identical or confusingly similar to Complainant’s BILDPLUS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <bildpl.us> domain name because the WHOIS information lists “James Cousin” as Registrant and that bears no relationship to the disputed domain name. Respondent has failed to provide further evidence to indicate it is commonly known by the domain name. Past panels have found, under similar circumstances, that respondents are not commonly known by domain names under Policy ¶4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). This Panel concurs with that logic. Complainant did not authorize Respondent to use the BILDPLUS mark. Respondent is not commonly known by the <bildpl.us> domain name under Policy ¶4(c)(iii).
Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the <bildpl.us> domain name. Such a lack of evidence is sufficient to allow this Panel to find Respondent has no rights to such a mark. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). Respondent does not own any such rights under Policy ¶4(c)(i).
Complainant claims Respondent fails to use the <bildpl.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the resolving website to pass itself off as Complainant. Complainant has provided documentation of such attempted passing off with its complaint. Respondent’s web site mirrors Complainant’s web site (except for the contact information, which is omitted). Hosting a doppelganger website shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(ii) and Policy ¶4(c)(iv). 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). Respondent fails to provide bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(ii) and Policy ¶4(c)(iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses its <bildpl.us> domain name in bad faith because it operates the resolving website in a manner designed to attract Internet users for commercial gain by impersonating Complainant’s own website. Such behavior constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Respondent registered and uses the <bildpl.us> domain in bad faith pursuant to Policy ¶4(b)(iv).
The enunciated provisions of Policy ¶4(b) are meant to be merely illustrative of bad faith. A respondent’s bad faith may be demonstrated by ancillary allegations considered under a totality of the circumstances test. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). In light of Respondent’s use of the dispute domain name, there is no doubt Respondent actually knew about Complainant’s mark when the domain name was registered. Such actions lead to a finding of bad faith under Policy ¶4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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"). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bildpl.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, November 11, 2015
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