DECISION

 

Bio World Merchandising, Inc. v. Darren Haught

Claim Number: FA1708001744922

 

PARTIES

Complainant is Bio World Merchandising, Inc. (“Complainant”), represented by Allison R. Imber of Allen, Dyer, Doppelt, Milbraith & Gilchrist, P.A., Florida, USA.  Respondent is Darren Haught (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bioworldfootwear.com> (the ‘Domain Name’), registered with GoDaddy.com, 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.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 16, 2017; the Forum received payment on August 16, 2017.

 

On August 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the<bioworldfootwear.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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@bioworldfootwear.com.  Also on August 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 September 11, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant’s contentions can be summarised as follows:

 

Complainant is the owner of US registered trade marks for BIOWORLD for, inter alia footwear with first use in commerce for leather goods including distribution services relating to footwear in 2005 and for footwear itself since 2008. Complainant operates its web sites at bioworldmerch.com and bioworldcorp.com.

 

The Domain Name was originally registered in 2011 and used in relation to footwear by a third party to this dispute. Sometime between March and July 2016 the domain name changed hands into the name of Albert Lim of Chino, California and became an online footwear retail store. The registrant changed to the current details some time between December 2016 and March 2017, but the website remained substantially similar. Since the registration by Albert Lim there have been a number of complaints that the web site at the Domain Name has been used as a phishing web site to steal customer’s credit card information and money and that the current contact details are fake.

 

A cease and desist letter was sent to the current registrant details and in response Complainant received a letter from attorneys for a Mr Haight explaining he had nothing to do with Bioworld other than he had attempted to purchase shoes from them a year ago.

 

The Domain Name wholly incorporates Complainant’s trade mark BIOWORLD adding only the generic term ‘footwear’.

 

Respondent is using a confusingly similar domain name to trade off of Complainant’s goodwill by offering competing goods and services as well as defrauding customers by stealing their credit card numbers to make fraudulent charges. This does not create rights and legitimate interests in the Domain Name, nor is it a bona fide offering of goods and services or fair use.

 

Defrauding customers and providing false contact information demonstrates that Respondent lacks rights and legitimate interests.

 

BIOWORLD is not a descriptive or generic term and it is accordingly highly improbable that Respondent could have randomly or accidentally chosen the Domain Name.

 

Even if the Domain Name were not being used to defraud third parties, using it to attract Complainant’s customers to a competing business using Complainant’s mark for commercial gain and to disrupt Complainant’s business would be sufficient for a finding of bad faith.   

 

 Respondent’s bad faith is further demonstrated by its use of false contact information.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant is the owner of US registered trade marks for BIOWORLD for, inter alia footwear with first use in commerce for leather goods including distribution services relating to footwear in 2005 and for footwear itself since 2008. Complainant operates its web sites at bioworldmerch.com and bioworldcorp.com.

 

There is evidence of feedback from customers that the web site at the Domain Name has been used for phishing and fraudulent purposes.

 

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:

 

 

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 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.”).

 

Identical and/or Confusingly Similar

 

The Domain Name in this Complaint combines Complainant’s BIOWORLD  mark (registered in the USA for retail services relating to footwear with first use recorded as 2005), the generic term ‘footwear’ and the gTLD .com.

 

The addition of terms which are related to Complainant’s business and services supports a finding of confusing similarity. Accordingly the addition of the generic word ‘footwear’ does not serve to distinguish the Domain Name from Complainant’s BIOWORLD mark especially bearing in mind that Complainant’s business is involved with footwear. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).)

 

The gTLD .com does not serve to distinguish the Domain Name from the BIOWORLD mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the  Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

 

Respondent has used a false name and address and does not appear to be commonly known by BIOWORLD Complainant’s mark.  Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.

 

Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark. See Coryn Group Inc v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant [offering] a product that is arguably identical to Complainant’s product and under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc, FA 113961 (Forum July 16, 2002)

 

Further there is evidence that the Domain Name has been used to defraud customers and steal credit card information which makes it more likely than not that Respondent was aware of the significance of the BIOWORLD name and is using it as a cover for its activities. The usage of Complainant’s BIOWORLD mark which has a reputation in relation to footwear retail services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant and use in relation to fraud cannot be legitimate. As such it cannot amount to the bona fide offering of goods and services.

 

Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panelist  finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

 

As determined above Respondent's  use of the site is commercial and he is using it to make a profit from competing services not associated with Complainant in a confusing manner. The specific combination of marks and services in the Domain Name indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of  Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with  Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. See CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services).

 

Respondent’s activities also appears designed to disrupt the business of a competitor. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iii).)

 

Further the Domain Name has been used fraudulently to divert Complainant’s customers to disrupt the business of a competitor. See DatingDirect.com Limited 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 further evidence of bad faith registration and use pursuant to Policy 4 (b)(iii). This is all the more so because customers have been defrauded no doubt affecting Complainant’s reputation and BIOWORLD mark.

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has  satisfied the third limb of the Policy.

 

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 <bioworldfootwear.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Dawn Osborne, Panelist

Dated:  September 21, 2017