BBY Solutions, Inc. v. Vipul Desai
Claim Number: FA1712001763463
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is Vipul Desai (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ssl-bestbuy.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2017; the Forum received payment on December 18, 2017.
On December 19, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ssl-bestbuy.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 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@ssl-bestbuy.com. Also on December 19, 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 January 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, BBY Solutions, Inc., uses its BEST BUY mark in connection with retail stores that offer consumer electronics and appliances. Complainant has rights in the BEST BUY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,416,626, registered Apr. 29, 2008). Respondent’s <ssl-bestbuy.com> domain name is confusingly similar to Complainant’s BEST BUY mark because Respondent merely adds a hyphen, a descriptive term “ssl,” and a “.com” generic top level domain (“gTLD”) to the fully-incorporated BEST BUY mark.
Respondent has no rights or legitimate interests in the <ssl-bestbuy.com> domain name because Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. Additionally, Respondent does not use the <ssl-bestbuy.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect users to Complainant’s own gift card verification website.
Respondent registered and is using the <ssl-bestbuy.com>domain name in bad faith, as indicated by Respondent’s use of the name to redirect users to Complainant’s own website. Additionally, Respondent had actual notice of Complainant’s rights in the BEST BUY mark at the time it registered and subsequently used the name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, BBY Solutions, Inc., uses its BEST BUY mark in connection with retail stores that offer consumer electronics and appliances. Complainant has rights in the BEST BUY mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,416,626, registered Apr. 29, 2008). Respondent’s <ssl-bestbuy.com> domain name is confusingly similar to Complainant’s BEST BUY mark.
Respondent, Vipul Desai, registered the <ssl-bestbuy.com> domain name on November 5, 2017.
Respondent has no rights or legitimate interests in the <ssl-bestbuy.com> domain name. Respondent uses the disputed domain name to redirect users to Complainant’s own gift card verification website.
Respondent registered and is using the <ssl-bestbuy.com>domain name 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 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.”).
Complainant has rights in the BEST BUY mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <ssl-bestbuy.com> domain name is confusingly similar to Complainant’s BEST BUY mark, as Respondent merely added a descriptive term, a hyphen, and a gTLD to the fully-incorporated mark.
Respondent lacks rights and legitimate interests in the <ssl-bestbuy.com> domain name because Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. In cases where a respondent fails to respond to UDRP proceedings, the WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum Oct. 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known). In this case, the WHOIS information lists “Vipul Desai” as the registrant. Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, Respondent is not commonly known by the <ssl-bestbuy.com> domain name under Policy ¶ 4(c)(ii).
Respondent fails to use the <ssl-bestbuy.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name merely redirects users to Complainant’s own website. Typically, using a disputed domain name to redirect users to a complainant’s website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”). Here, Respondent’s <ssl-bestbuy.com> domain name redirects users to the <cry.org> domain, but ultimately lands users on Complainant’s official website that is used to verify gift card balances. Respondent’s use of the <ssl-bestbuy.com> domain name does not show it has rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii).
Respondent’s use of the <ssl-bestbuy.com> domain name to redirect users to Complainant’s website shows bad faith registration and use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Respondent had actual knowledge of Complainant’s rights in the BEST BUY mark before registering the <ssl-bestbuy.com> domain name; therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ssl-bestbuy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 24, 2018
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