BoxyCharm, Inc. v. Ibrahim Karadere
Claim Number: FA2001001878456
Complainant is BoxyCharm, Inc. ("Complainant"), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, United States. Respondent is Ibrahim Karadere ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boxycharm-shop.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 11, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <boxycharm-shop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 January 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@boxycharm-shop.com. Also on January 15, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 February 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a privately held company based in Florida with an office in Toronto. Complainant offers beauty products for sale via a monthly subscription service. Complainant has used the BOXYCHARM mark in connection with this service since its launch in 2013; its revenues reached US $137 million in 2018. Complainant states that it has more than 2.4 million social media followers worldwide and 10 million monthly visitors. Complainant owns trademark registrations for BOXYCHARM in various forms, including as a standard character mark, in the United States and other jurisdictions.
Respondent registered the disputed domain name <boxycharm-shop.com> in December 2019 and is using it for a website that displays the BOXYCHARM mark in the same stylized form used by Complainant and offers beauty products via a similar subscription service. Complainant characterizes this as a scam website, designed to confuse Internet users, promote fraudulent services, and mislead users into providing personal information. Complainant states that Respondent is not known by the name BOXYCHARM and that Complainant has not licensed or otherwise permitted Respondent to use its mark.
Complainant contends on the above grounds that the disputed domain name <boxycharm-shop.com> is confusingly similar to its BOXYCHARM mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <boxycharm-shop.com> incorporates Complainant's registered BOXYCHARM trademark, adding a hyphen, the generic term "shop," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Nintendo of America Inc. v. Jack Lavoire, FA 1878557 (Forum Feb. 5, 2020) (finding <nintendoswitch-shop.com> confusingly similar to NINTENDO SWITCH); Sanofi v. Whois Privacy Service / Wyatt Henry, D2019-2826 (WIPO Jan. 22, 2020) (finding <ambien-shop.com> confusingly similar to AMBIEN); BoxyCharm, Inc. v. Ibrahim Karadere, FA 1874946 (Forum Jan. 14, 2020) (finding <boxycharm.shop> identical or confusingly similar to BOXYCHARM). Accordingly, the Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that mimics Complainant's website, displays Complainant's mark and logo, and promotes directly competitive services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., BoxyCharm, Inc. v. Ibrahim Karadere, FA 1874946, supra (finding lack of rights or interest in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The Panel notes that Respondent's registration and similar use of two other domain names incorporating Complainant's mark were the subject of recent proceedings under the Policy, and in both instances Respondent was found to have registered and used the domain names in bad faith. See BoxyCharm, Inc. v. Ibrahim Karadere, FA 1874946, supra (ordering transfer of <boxycharm.shop>); BoxyCharm, Inc. v. Ibrahim Karadere, FA 1874947 (Forum Jan. 10, 2020) (ordering transfer of <boxycharm.club>). For substantially the same reasons as those set forth in those decisions, the Panel finds that the disputed domain name <boxycharm-shop.com> was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boxycharm-shop.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 8, 2020
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