Einstein and Noah Corp. v. Andrei Arhipov
Claim Number: FA1902001831124
Complainant is Einstein and Noah Corp. (“Complainant”), represented by Elizabeth C. Buckingham of Dorsey & Whitney, LLP, Minnesota, USA. Respondent is Andrei Arhipov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <einsteinbrosgiftcard.com>, registered with REG.RU 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2019; the Forum received payment on March 1, 2019.
On February 26, 2019, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <einsteinbrosgiftcard.com> domain name is registered with REG.RU LLC and that Respondent is the current registrant of the names. REG.RU LLC has verified that Respondent is bound by the REG.RU 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 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2019 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@einsteinbrosgiftcard.com. Also on March 11, 2019, 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 2, 2019, 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 owns and operates a popular bagel chain, and has been in existence since 1995. Complainant has rights in the EINSTEIN BROS and EINSTEIN BROS. marks through their registration in the United States in, respectively, 2017 and 1999.
Complainant alleges that the disputed domain name is identical or confusingly similar to its marks as, for one mark, it incorporates the entire mark less the period, while for the other mark it incorporates the mark in its entirety. The disputed domain name also adds the generic term “gift cards” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
According to Complainant, Respondent has no rights or legitimate interests in the disputed 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 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 uses the domain name to display pornographic images.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to its pornographic website by creating confusion as to the source of the domain name. Further, Respondent had actual and/or constructive knowledge of Complainant’s marks given the longstanding use of the marks and Complainant’s worldwide fame and notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the marks EINSTEIN BROS. and EINSTEIN BROS dating back to, respectively, 1999 and 2017. The marks are used to market bagels.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a website that displays adult entertainment pictures accompanied by English text.
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.”).
Preliminary Issue: Language of Proceeding
Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. Complainant argues that Respondent is fluent in the English language because the resolving website is in English. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as relevant include evidence of Respondent’s understanding of the language of the Complaint. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding shall be in English.
The disputed domain name is confusingly similar to Complainant’s marks as it incorporates one of the marks in its entirety, and it incorporates the other entire mark, less the period. The disputed domain name also adds the “.com” gTLD and the generic term “gift card”. Such changes to a mark generally do not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also TechSmith Corporation v. Cao Xiaoxia, FA 1732972 (Forum June 26, 2017) (“The addition of a period to a mark does not remove the result from the realm of confusing similarity.”). The Panel therefore finds that the <einsteinbrosgiftcard.com> domain name is confusingly similar to both the EINSTEIN BROS and EINSTEIN BROS. marks under Policy ¶ 4(a)(i).
Complainant has not authorized, licensed, or otherwise permitted Respondent to use its marks. Respondent is not commonly known by the disputed domain name: absent a response, relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS identifies “Andrei Arhipov” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to resolve to a website that displays adult entertainment material. Using a confusingly similar domain name in connection with adult oriented material generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). As such, the Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Moreover, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
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 attempting to attract, for commercial gain, Internet users to its adult entertainment website by creating confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website and/or the products or services at the resolving website. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Bad faith can also be found where the resolving webpage displays adult oriented material. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Accordingly, the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under 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 <einsteinbrosgiftcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 2, 2019
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