Bieber LLC v. LU Ben
Claim Number: FA1810001810487
Complainant is Bieber LLC (“Complainant”), California, USA. Respondent is LU Ben (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bieber-windows.com>, registered with GoDaddy.com, LLC.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2018; the Forum received payment on October 5, 2018.
On October 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bieber-windows.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 October 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@bieber-windows.com. Also, on October 10, 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.
A timely Response was received and determined to be complete on October 30, 2018.
On November 5,2018, an additional submission was filed by Complainant
On November 1,2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has for many years been using its trademark primarily in relation to windows and doors also just called “windows” to describe a client project. Complainant has rights in the BIEBER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,103,572, registered June 13, 2006). See Compl. Annex 1. Respondent’s <bieber-windows.com> domain name is identical and confusingly similar to Complainant’s mark as it contains the descriptive term “windows.”
Respondent has no rights or legitimate interests in the <bieber-windows.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent deliberately used the domain name in connection with an email address where it confuses users into believing they are Complainant to solicit goods. See Compl. Annexes 2 and 3.
Respondent registered and uses the <bieber-windows.com> domain name in bad faith. Respondent creates confusion as to the source of the goods it solicits via email. See Compl. Annexes 2 & 3.
B. Respondent
Respondent uses the disputed domain name to communicate with Bieber France, a French window manufacture selling windows and doors worldwide.
Complainant’s contact person should also know of Respondent, as Respondent communicates with Complainant’s authorized seller located in France. The only reason there is a current dispute is because of an issue outside of the issue surrounding the domain name.
C. Additional Submissions
Complainant added six attachments showing several agreements that evidence a relationship between Benoit LUys and distributors and manufacturers of windows.
Complainant is the registered owner of the word mark BIEBER in international classes 019 and 035, filed on April 12, 2005 and registered on June 13 2006.
Respondent LU Ben registered the domain name bieber-windows.com on June 12, 2012.
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.
Complainant claims rights in the BIEBER mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,103,572, registered June 13, 2006). See Compl. Annex 1. Registration of a mark with the USPTO sufficiently confers a Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the BIEBER mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <bieber-windows.com> domain name is identical and confusingly similar to Complainant’s mark as it only adds a hyphen and the descriptive term “windows.” plus the “.com” generic top-level domain (“gTLD”).
The Panel finds that similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds the <bieber-windows.com> domain name is confusingly similar to the BIEBER mark under Policy ¶4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <bieber-windows.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “LU Ben” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BIEBER mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <bieber-windows.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent deliberately used the domain name in connection with an email address where it confuses users into believing it belongs to Complainant to solicit goods. Using a confusingly similar domain name to pass off as a complainant can evidence a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant provides screenshots of these alleged emails, which shows that Respondent purports to offer window installation services using the at-issue domain name. See Compl. Annexes 2 and 3. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Registration and Use in Bad Faith: Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <bieber-windows.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the goods or services it solicits over email. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant supported a finding of bad faith). As noted above, Complainant provides screenshots of these alleged emails, which shows that Respondent purports to offer window installation services using the at-issue domain name. See Compl. Annexes 2 and 3. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv). Respondent filed a copy of a French trademark registration certificate owned by a third party but provided no evidence to show that a license of use exists between the French trademark registration owner and the Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bieber-windows.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________
Jaime Delgado Panelist
Dated: November 13, 2018
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