BLUEBIRD TRADING LIMITED v. Dustin Boling / WODC
Claim Number: FA1807001795068
Complainant is BLUEBIRD TRADING LIMITED (“Complainant”), represented by Lucas S. Michels of SPIRO HARRISON, Washington, USA. Respondent is Dustin Boling / WODC (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <synthetixfive.com>, registered with Neubox Internet S.A. DE C.V.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2018; the Forum received payment on July 2, 2018.
On July 5, 2018, Neubox Internet S.A. DE C.V. confirmed by e-mail to the Forum that the <synthetixfive.com> domain name is registered with Neubox Internet S.A. DE C.V. and that Respondent is the current registrant of the name. Neubox Internet S.A. DE C.V. has verified that Respondent is bound by the Neubox Internet S.A. DE C.V. 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 July 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@synthetixfive.com. Also on July 11, 2018, 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 August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant, BLUEBIRD TRADING LIMITED, uses the S5 SYNTHETIX5 mark in connection with its novelty goods in the nature of fake urine kits for practical jokes, comprised of dispensing bladder bag with belt and fake urine. Complainant has rights to the S5 SYNTHETIX5 mark based upon its filing with the United States Patent and Trademark Office (e.g. Ser. No. 87868641, filed Apr. 9, 2018). See Amend. Compl. Annex E. Complainant also has common law rights in the mark dating back to at least February of 2009. Respondent’s <synthetixfive.com> domain name is confusingly similar to Complainant’s S5 SYNTHETIX5 mark as it incorporates a substantial portion of the mark “synthetix,” replaces the number “5” with the word “five,” and omits the “S5” acronym.
Respondent has no rights or legitimate interests in the <synthetixfive.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the S5 SYNTHETIX5 mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer for sale goods and/or services that compete directly with Complainant’s business.
Respondent registered and is using the <synthetixfive.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business, and attract for commercial gain, users to the disputed domain name’s website to offer for sale competing goods and/or services.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <synthetixfive.com>, was registered on September 12, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <synthetixfive.com>, is confusingly similar to Complainant’s common law trademark, S5 SYNTHETIX5. Complainant has adequately plead it rights and interests in this common law trademark. Respondent arrives at the disputed domain name by incorporating a substantial portion of the mark “synthetix,” replacing the number “5” with the word “five,” and omitting the “S5” acronym. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Further, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent apparently uses the disputed domain name to offer for sale goods and/or services that compete directly with Complainant’s business.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent attempts to disrupt Complainant’s business, and attract for commercial gain, users to the disputed domain name’s website to offer for sale competing goods and/or services. Use of a domain name to disrupt a complainant’s business by offering for sale competing goods and/or services can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides a screenshot of the disputed domain name’s resolving website which offers for sale competing synthetic urine goods and/or services. See Amend. Compl. Annex G. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
The Panel also finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s prior interests in and to that trademark. The unique nature of the mark and the totality of the circumstances leads the Panel to this conclusion.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <synthetixfive.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: August 6, 2018
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