BBY Solutions, Inc. v. Michael Pichoto
Claim Number: FA1512001651574
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota, USA. Respondent is Michael Pichoto (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magnoliatvs.com>, registered with GoDaddy.com, LLC.
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 December 9, 2015; the Forum received payment on December 9, 2015.
On December 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <magnoliatvs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2016 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@magnoliatvs.com. Also on December 14, 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 January 6, 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant BBY Solutions, Inc. owns rights in the MAGNOLIA mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,129,687, registered Aug. 15, 2006). Respondent’s disputed <magnoliatvs.com> domain is identical or confusingly similar to Complainant’s MAGNOLIA mark as the domain merely adds the generic top-level domain (“gTLD”) “.com” and the generic term “tvs” meaning “televisions.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the domain name or acquired any trademark rights in the MAGNOLIA mark. Further, Respondent’s use of the disputed domain, to offer competing products and services to those of Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain in bad faith. Respondent is attempting to attract and confuse internet users for profit through use of Complainant’s MAGNOLIA mark and the impression of false affiliation that results. Respondent had constructive knowledge of Complainant’s rights in the MAGNOLIA mark at the time of registration.
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 transferring or cancelling 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.
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 BBY Solutions, Inc. uses the MAGNOLIA mark in connection with its brand of televisions (and other consumer electronics). Complainant has rights in the MAGNOLIA mark through registration of the mark with the USPTO (e.g., Reg. No. 3,129,687, registered Aug. 15, 2006). A complainant’s registration of a mark with the USPTO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
Complainant claims Respondent’s <magnoliatvs.com> domain is identical or confusingly similar to the MAGNOLIA mark in which Complainant has rights. The disputed domain <magnoliatvs.com> differs from the MAGNOLIA mark through the addition of the gTLD “.com” and the generic term “tvs.” The gTLD “.com” is not relevant to an analysis of confusing similarity under Policy ¶4(a)(i) because domain name syntax requires every domain to have a TLD (consisting of a gTLD or ccTLD). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Adding a generic or descriptive term does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶4(a)(i).”). Respondent’s <magnoliatvs.com> is confusingly similar to Complainant’s MAGNOLIA mark.
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 not been commonly known by the disputed domain or been affiliated with Complainant in any manner whatsoever. The domain name was initially registered using a privacy service. The present WHOIS information associated with the disputed domain (which was revealed after this Proceeding was brought) indicates Respondent registered the domain using the name “Michael Pichoto” which does not resemble the disputed domain in any manner whatsoever. It can be determined a respondent is not commonly known by the disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent uses the disputed domain to sell products that compete with Complainant. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Using a domain that is confusingly similar to a complainant’s mark to sell competing goods is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Respondent’s use does not fall within the parameters of Policy ¶4(c)(i) or ¶4(c)(iii).
Respondent registered the disputed domain name using a privacy service. This means Respondent has not publicly associated itself with the disputed domain name. Once that happens, Respondent cannot acquire rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is attempting to attract and confuse internet users for profit through use of Complainant’s MAGNOLIA mark at the resolving website and the impression of false affiliation that results. Respondent uses the disputed domain to resolve to a commercial website where Respondent sells televisions and other electronic products which directly compete with Complainant. The Yelp reviews make it clear at least some people think Respondent is affiliated with Complainant based upon the domain name (which indicates actual confusion rather than hypothetical confusion). A respondent acts in bad faith by using a confusingly similar domain to sell competing goods. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”). Respondent has acted in bad faith pursuant to Policy ¶4(b)(iv).
The content of the domain name’s website provides sufficient evidence Respondent knew enough about Complainant’s business and mark. This supports a finding of bad faith under Policy ¶4(a)(iii).
Finally, Respondent registered the domain name using a privacy service. This raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. This Panel is willing to find bad faith on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <magnoliatvs.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, January 14, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page