Bop, LLC v. Elizabeth Smith
Claim Number: FA1704001725067
Complainant is Bop, LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Elizabeth Smith (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bagshopbop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 3, 2017; the Forum received payment April 3, 2017.
On April 5, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bagshopbop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2017, 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@bagshopbop.com. Also on April 5, 2017, 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 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant, Bop, LLC, is a designer apparel and accessories retailer based in Madison, WI. In connection with this business, Complainant uses the SHOPBOP mark. Complainant has rights in the SHOPBOP mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,740,164, registered Jul. 22, 2003). See Compl., at Attached Ex. D. Respondent’s domain name, <bagshopbop.com>, is confusingly similar to Complainant’s SHOPBOP mark as it contains the mark in its entirety and appends the generic term “bag” as well as the generic top level domain (“gTLD”) “.com.”
Respondent has no rights to nor legitimate interests in <bagshopbop.com>. Respondent is not commonly known by the domain name, and Complainant did not authorize Respondent to register a domain containing its SHOPBOP mark. Further, Respondent failed to use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, <bagshopbop.com> resolves to a website offering counterfeit items in competition with Complainant’s business. See Compl., at Attached Ex. E.
Respondent registered and used <bagshopbop.com> in bad faith. Respondent utilizes the resolving page to disrupt Complainant’s business and divert Internet customers seeking Complainant to Respondent’s website for Respondent’s commercial gain. In addition, Respondent’s registration and use indicate actual knowledge of Complainant’s rights in the SHOPBOP mark—evidence supporting a finding of bad faith registration pursuant to a Policy ¶ 4(a)(iii) analysis.
(b) Respondent’s Contentions in Response in this Proceeding:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered <bagshopbop.com> March 24, 2017. See Compl., at Attached Ex. A.
Complainant established legal rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interest in the mark or the
disputed domain name containing Complainant’s protected mark.
Respondent registered a disputed domain name that contains Complainant’s protected mark in its entirety and the disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights in the SHOPBOP mark based on registration with the USPTO (Reg. No. 2,740,164, registered Jul. 22, 2003). See Compl., at Attached Ex. D. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel therefore finds Complainant has rights in the SHOPBOP mark.
Complainant argues that Respondent’s domain name, <bagshopbop.com>, is confusingly similar to Complainant’s SHOPBOP mark as it contains the mark in its entirety and appends the generic term “bag” as well as the gTLD “.com.” Addition of terms that relate to a complainant’s business to a disputed domain name containing that protected mark does not distinguish the mark from the domain name pursuant to Policy ¶ 4(a)(i). Further, addition of a gTLD likewise does not distinguish the disputed domain name from the protected mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore finds that <bagshopbop.com> is confusingly similar to Complainant’s SHOPBOP mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing Complainant’s protected mark in its entirety that is confusingly similar to that protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent has no rights or legitimate interests in <bagshopbop.com> since Respondent is not commonly known by the domain name. Complainant did not authorize Respondent to register a domain name containing Complainant’s mark or to use its protected mark in any way. Where a response is not filed, WHOIS information can be used to support a finding that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record lists registrant as “Elizabeth Smith.” The Panel may therefore find that Respondent is not commonly known by <bagshopbop.com> persuant Policy ¶ 4(c)(ii).
Complainant contends Respondent failed to use <bagshopbop.com> in connection with a bona fide offer of goods or services, or a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a webpage offering counterfeit products for sale, in direct competition with Complainant’s business. See Compl., at Attached Ex. E. Use of a disputed domain name to resolve to a webpage selling counterfeit goods or services in direct competition with a complainant’s business supports a finding that a respondent has not used a domain for a bona fide offering or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) & (iv). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). The Panel therefore finds that Respondent failed to use <bagshopbop.com> in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) & (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends Respondent registered and used <bagshopbop.com> in bad faith as Respondent utilizes the resolving page to disrupt Complainant’s business and divert Internet customers seeking Complainant to Respondent’s website for Respondent’s commercial gain through sales of counterfeit items. See Compl., at Attached Ex. E. Use of a disputed domain name to divert customers and sell counterfeit items in direct competition with a complainant can evidence a finding of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). The Panel therefore finds Respondent registered and used <bagshopbop.com> in bad faith pursuant to a Policy ¶ 4(b)(iii) analysis.
Complainant argues that Respondent used Complainant’s SHOPBOP mark to promote Respondent’s <bagshopbop.com> domain name in an attempt to benefit from the goodwill associated with Complainant’s mark. Use of a complainant’s mark to intentionally attract Internet users from a complainant supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Use of a complainant’s mark to attract complainant’s customers to counterfeit products is further evidence of a respondent’s bad faith per Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). The Panel therefore finds Respondent registered and used <bagshopbop.com> in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts Respondent had actual knowledge of Complainant’s SHOPBOP mark at the time it registered and subsequently used the <bagshopbop.com> domain name. Complainant argues that Respondent’s position as a competing retail store and the notoriety of the SHOPBOP mark demonstrates Respondent’s actual knowledge of the mark. Registration and use of a domain name, containing complainant’s famous mark, that resolves to a webpage offering goods and services in competition with said complainant can further support a finding of bad faith registration and use under Policy ¶ 4(a)(iii). 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 an in competition with Complainant.”). The Panel finds that Respondent had actual knowledge of Complainant’s mark and rights at the time Respondent registered and used the disputed domain name and Respondent’s conduct supports findings of bad faith registration and use pursuant to a Policy ¶ 4(a)(iii) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bagshopbop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: May 11, 2017
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