Tilibra Produtos De Papelaria Ltda. v. Bests, LLC
Claim Number: FA1710001753232
Complainant is Tilibra Produtos De Papelaria Ltda. (“Complainant”), represented by Lori S. Meddings of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Bests, LLC (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tilibra.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 11, 2017.
On October 11, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <tilibra.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@tilibra.com. Also on October 12, 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 November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 subsidiary to one of the world’s largest suppliers of business, consumer, and academic products. Complainant holds a trademark registration for the TILIBRA mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,397,585, registered June 17, 1986). Respondent’s <tilibra.com> is confusingly similar to the TILIBRA mark because it incorporates the mark in its entirety and merely attaches a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <tilibra.com>. Respondent is not commonly known by the disputed domain name, rather WHOIS indicates the registrant of <tilibra.com> as “Bests, LLC.” Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the <tilibra.com> domain name to capitalize on the goodwill of Complainant’s mark and to host a parked page, containing links to office and paper suppliers that directly compete with Complainant.
Respondent registered and used <tilibra.com> in bad faith. Respondent attempted to sell the <tilibra.com> domain name for R$ 5,000 (five thousand reais, a Brazilian currency), which far exceeds Respondent’s out of pocket costs. Further, Respondent has engaged in an ongoing pattern of cybersquatting by being the respondent in several UDRP cases. Additionally, Respondent disrupted Complainant’s business by hosting a parked page that contained links to Complainant’s competitors, presumably for financial gain. Finally, Respondent had constructive notice of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <tilibra.com> domain name.
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.”).
Complainant registered the TILIBRA mark with the USPTO. The consensus among panels is USPTO registrations are sufficient to show rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Here, Complainant has provided this Panel with a copy of its TILIBRA mark registration with the USPTO (e.g., Reg. No. 1,397,585, registered June 17, 1986). Therefore, the Panel finds Complainant has shown rights to the TILIBRA mark under Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <tilibra.com> domain name is confusingly similar to the Complainant’s TILIBRA mark. Complainant argues Respondent incorporating the mark in its entirety and merely attaching a gTLD fails to distinguish the disputed domain name from the mark. Generally, the addition of a gTLD and making no changes to the mark fails to differentiate the mark from the disputed domain name. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Here, Respondent simply took the TILIBRA mark and attached a “.com” gTLD. There were no other changes made to the mark. Therefore, the Panel finds Respondent’s domain name is identical to Complainant’s mark, and thus Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has proved this element.
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), and then the burden shifts to Respondent to show it does have 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 asserts Respondent has no rights or legitimate interests in the <tilibra.com> domain name because Respondent is not commonly known by that domain name. When a respondent fails to submit a response, panels have relied on WHOIS information to discern the identity of the respondent. 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). Here, WHOIS identifies the registrant of the <tilibra.com> domain name as “Bests, LLC.” There is no other evidence to suggest Respondent is known by the disputed domain name. Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent has no rights or legitimate interests in <tilibra.com> by not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues the use of an identical or confusingly similar domain name to compete with Complainant’s business cannot constitute having rights or legitimate interest. Parked pages that contain hyperlinks to a complainant’s competitors are generally held to lack rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). In this case, Respondent’s <tilibra.com> resolves to a parked page containing links to Complainant’s competitors. The hyperlinks purport to offer calendars, notebooks, tablets, and other related office supplies. Presumably, Respondent receives click-through revenue from these external links. Therefore, the Panel finds Complainant has satisfied Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant asserts Respondent registered and used <tilibra.com> in bad faith by attempting to sell the disputed domain name to Complainant. Generally, a respondent is considered to have acted in bad faith when it attempts to sell a disputed domain name that far exceeds out of pockets costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Here, Complainant claims Respondent offered the disputed domain name for R$ 5,000 (reais, a Brazilian currency) directly to Complainant. Complainant argues this amount far exceeds the Respondent’s out of pocket costs, as Respondent registered <tilibra.com> with “Fabulous.com” in 2005 for $9.99. Complainant argues that based on this pricing, out-of-pockets costs since 2005 amounts to US $120 (approx. R$ 396). The Panel finds Complainant has satisfied Policy ¶ 4(b)(i).
Next, Complainant contends Respondent registered and used the <tilibra.com> domain name in bad faith by engaging in a pattern of bad faith registration. Generally, multiple prior adverse rulings that order transfers of domain names demonstrates a pattern of bad faith registration. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant shows Respondent has had such adverse rulings in several UDRP cases going back as far as 2011, and has provided the UDRP decisions. Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(b)(ii).
Additionally, Complainant asserts Respondent registered and used <tilibra.com> in bad faith by disrupting Complainant’s business by hosting a parked page that contained links to office supplies that directly competed with Complainant’s business. Typically, the use of a disputed domain name to contain hyperlinks to a complainant’s competitors constitutes bad faith. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Here, Respondent’s <tilibra.com> resolves in a parked page that contains links to various office supplies including calendars, tablets, notebooks, pens, and other various products. It is presumed Respondent receives click-through fees from users who are confused and searching for Complainant’s products. Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(b)(iii).
Finally, Complainant asserts that its trademark registrations for the TILIBRA mark existed well before the registration of the disputed domain name, and thus Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and use of the domain name’s website Respondent had actual knowledge of the mark and Complainant's rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tilibra.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 8, 2017
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