Equibrand Corporation v. Natalie Heaton
Claim Number: FA2006001902509
Complainant is Equibrand Corporation (“Complainant”), represented by John J. Arnott of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Natalie Heaton (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <equi-brand.com>, registered with Tucows Domains Inc..
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2020; the Forum received payment on July 6, 2020.
On July 2, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <equi-brand.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2020 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@equi-brand.com. Also on July 10, 2020, 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, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant manufactures and sells equine products throughout the world. Complainant has rights in the EQUIBRAND mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,670,800, registered Jan. 7, 2003.). See Amend. Compl. Ex. D. Respondent’s <equi-brand.com> domain name is confusingly similar to Complainant’s EQUIBRAND mark because it incorporates the mark in its entirety and only adds a hyphen and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <equi-brand.com> domain name. Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use the mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it engage in any legitimate noncommercial or fair uses with the mark. Instead, Respondent attempts to attract Internet users for commercial gain by passing off and compete with Complainant by imitating Complainant and selling competing products through the disputed domain name’s resolving website.
Respondent registered and uses <equi-brand.com> domain name in bad faith. Respondent attracts Internet users for commercial gain by passing off as Complainant, or attempting to imply an affiliation with Complainant, and sells competing products on the disputed domain name’s resolving website. Respondent also registered the disputed domain name with actual knowledge of Complainant’s rights and use of the EQUIBRAND mark. Finally, Complainant’s use of a WHOIS privacy service contributes to any demonstrated bad faith usage of the domain name by Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures and sells equine products throughout the world.
2. Complainant has established its trademark rights in the EQUIBRAND mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,670,800, registered Jan. 7, 2003).
3. Respondent registered the <equi-brand.com> domain name on Jan. 25, 2020.
4. Respondent attempts to attract Internet users for commercial gain by passing itself off as Complainant and competing with Complainant by imitating Complainant and selling competing products through the disputed domain name’s resolving website.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the EQUIBRAND mark through its multiple registrations with the USPTO. (e.g., Reg. 2,670,800, registered Jan. 7, 2003). See Amend. Compl. Ex. D. Registration with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the EQUIBRAND mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EQUIBRAND mark. Complainant argues that Respondent’s <equi-brand.com> domain name is confusingly similar to Complainant’s EQUIBRAND mark as it merely adds a hyphen to the middle of the mark and the “.com” gTLD to the end. The addition of a hyphen and a gTLD is generally insuffucient to differentiate a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Here, Complainant argues that Respondent’s domain name incorporates Complainant’s EQUIBRAND mark entirely, and only adds a hyphen between the letters “I” and “b”. Additionally, the domain name adds the “.com” gTLD to the end of the mark. Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s EQUIBRAND trademark and to use it in its domain name, adding a hyphen in the middle of the mark which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <equi-brand.com> domain name on Jan. 25, 2020.
(c) Respondent attempts to attract Internet users for commercial gain by passing itself off as Complainant and competing with Complainant by imitating Complainant and selling competing products through the disputed domain name’s resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <equi-brand.com> domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its EQUIBRAND mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS of record identifies the registrant of the disputed domain name as “Natalie Heaton” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Amend. Compl. Ex. K. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii);
(f) Complainant argues that Respondent is not using the <equi-brand.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name’s resolving website to pass itself off as Complainant in order to benefit commercially by offering for sell goods and services that compete with Complainant’s business. Using a disputed domain name to pass off as a complainant and offer competing products or services is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).; see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the domain name’s resolving website, which features Complainant’s mark alongside offers for competing goods and services in the equestrian industry. See Amend. Compl. Ex. J. As the Panel agrees, it finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s registration and use of the <equi-brand.com> domain name is in bad faith because Respondent is attracting internet users for commercial gain by passing itself off as Complainant. Using a confusingly similar domain name to confuse Internet users into believing a disputed domain name is affiliated with a complainant in order to sell competing products may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (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). Moreover, Respondent’s website prominently uses Complainant’s EQUIBRAND Mark identically, without a hyphen, demonstrating the attempt to pass off the disputed domain name as associated with Complainant. The Panel recalls Complainant’s screenshots of the <equi-brand.com> resolving website which offers competing equestrian logo design and marketing services. See Amend. Compl. Ex. J. Complainant argues the website uses the EQUIBRAND mark to create a false association between Complainant and Respondent. As the Panel agrees, it finds Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <equi-brand.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the EQUIBRAND mark. Use of a complainant’s famous mark to offer related and competing goods or services may show actual knowledge of Complainant’s rights in a mark. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant provides screenshots of its website and numerous articles featuring its products. See Amend. Compl. Exs. D through I. Complainant argues these demonstrate the widespread notoriety and use of its EQUIBRAND mark. Complainant also argues that Respondent is likely a dressage rider in the UK, which means Respondent is likely aware of Respondent’s company and products, which are sold there. See Amend. Compl. Exs. K and L. Finally, Complainant points out that the <equi-brand.com> domain name is confusingly similar to Complainant’s EQUIBRAND mark. Thus, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s mark, and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent’s use of a WHOIS privacy service further indicates bad faith. The presence of a WHOIS privacy service by itself may not establish bad faith usage, but it may contribute to an already established finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Complainant provides screenshots of the disputed domain name’s WHOIS information, which is redacted behind “Privacy Inc.”. See Amend. Compl. Ex. B. As the Panel agrees, it finds Respondent’s use of a privacy service further affirms the other bad faith arguments found to be true.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <equi-brand.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 4, 2020
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