Boygenius Inventions, LLC v. WP beginner
Claim Number: FA1703001722109
Complainant is Boygenius Inventions, LLC (“Complainant”), represented by Matthew G. McKinney of Allen, Dyer, Doppelt and Gilchrist, P.A., Florida, USA. Respondent is WP beginner (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name(s) at issue is <wpbeginnerhub.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2017; the Forum received payment on March 16, 2017.
On Mar 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wpbeginnerhub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2017 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@wpbeginnerhub.com. Also on March 17, 2017, 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 April 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is in the business of providing an online forum for website development resources. In connection with its business, Complainant uses the WPBEGINNER trademark. Complainant has rights in the WPBEGINNER mark as a result of its registration in the United States on November 17, 2015.
According to Complainant, the disputed domain name is confusingly similar to its WPBEGINNER mark because it incorporates the mark in its entirety, paired with the addition of the generic term “hub” and the “.com” generic top-level domain (“gTLD”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the WPBEGINNER mark in any respect. Respondent infringed Complainant’s mark by offering a competing web development service at the disputed domain name. Currently, the disputed domain name resolves to a home page which provides web development services. By using the disputed domain name for commercial gain and diversionary use, Respondent is not making 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). Therefore, Respondent has no rights or legitimate interests in the disputed domain.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith by using it to offer competing services. Registering the disputed domain name for the purpose of disrupting the business of a competitor by offering competing services can be considered bad faith under Policy ¶ 4(b)(iii). Respondent’s use of Complainant’s name in an attempt to attract, for commercial gain, Internet users to Respondent’s website is construed as bad faith under Policy ¶ 4(b)(iv). Additionally, Respondent’s registration of the disputed domain name was intended to create confusion, as the use of <wpbeginnerhub.com> to provide competing services is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). Respondent’s registration of the disputed domain name with actual or constructive knowledge of Complainant’s rights in the WPBEGINNER mark, as shown by the similarity of offered products or services, is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent did send some e-mails to the Forum, but those e-mails did not address the substance of the dispute.
Complainant owns the mark WPBEGINNER and uses it to market website development services.
Complainant’s rights in its mark date back to at least November 2015.
The disputed domain name was registered in December 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a website that offers web development services that compete with those of 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 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 (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 disputed domain name is confusingly similar to the WPBEGINNER mark because it incorporates the mark in its entirety, paired with the addition of the generic term “hub” and the “.com” gTLD. Panels have determined that domain names are confusingly similar to a mark where the domain names consisted of a mark or marks and an added term. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity to exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel finds that the disputed domain name <wpbeginnerhub.com> is confusingly similar to Complainant’s WPBEGINNER mark per Policy ¶ 4(a)(i).
Complainant has not licensed or permitted Respondent to use the WPBEGINNER mark in any respect. Failure to establish authorization or approval for a respondent to use a complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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 that it is commonly known by the domain name).
The Panel notes that the WHOIS information of record identifies Respondent as "WP beginner." However, nothing else in the file indicates that Respondent is commonly known by that name. Lack of affirmative evidence to prove that a respondent is commonly known by a disputed domain name can support a finding that the respondent is not commonly known by the disputed domain name, even when WHOIS information appears to indicate the respondent is known by the disputed domain name. See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-’ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”) The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to offer competing web development services. Use of a disputed domain name for commercial gain and diversionary, competing use displays a lack of rights or legitimate interests as it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Accordingly, the Panel finds that the use of the disputed domain name for commercial gain and diversionary use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the domain name to promote its own web service business in direct competition with Complainant. Panels have typically defined competitor broadly and held that using a domain name featuring the complainant’s mark to directly compete with the complainant is bad faith conduct under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent is a competitor of Complainant, and that Respondent’s registration and use of the disputed domain name is in bad faith under Policy ¶ 4(b)(iii).
Further, the disputed domain name resolves to a homepage of a web development service, which is similar to Complainant’s own web development service page. Thus Respondent has registered and used the disputed domain name in bad faith as Respondent is merely trying to benefit from confusion by operating its website at the disputed domain name using Complainant’s marks in an attempt to attract, for commercial gain, Internet users to Respondent’s website. Panels have found such use to be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See World Wrestling Entertainment, Inc. v. REDA EL KASRAOUI, FA 1111001416010 (Forum Dec. 29, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was attempting to benefit from confusion created by operating websites with confusingly similar domain names). The Panel finds that the use in the present case is in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wpbeginnerhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 19, 2017
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