BBY Solutions, Inc. v. shone
Claim Number: FA1804001782569
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is shone (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <checkbestbuycardbalance.com>, <bestbuy-giftcard.info>, and <best-buy-balance.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2018; the Forum received payment on April 19, 2018.
On April 20, 2018, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <checkbestbuycardbalance.com>, <bestbuy-giftcard.info>, and <best-buy-balance.com> domain names are 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 April 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2018 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@checkbestbuycardbalance.com, postmaster@bestbuy-giftcard.info, postmaster@best-buy-balance.com. Also on April 20, 2018, 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 May 15, 2018, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it uses its BEST BUY mark in connection with retail stores offering consumer electronics and appliances. Complainant has rights in the BEST BUY mark through its registration of the mark in the United States in 2008.
Complainant alleges that the disputed domain names incorporate Complainant’s BEST BUY mark entirely, and add the terms “check,” “card,” “gift card,” and “balance” which describe Complainant’s business. Further, the inclusion of the generic top-level domain (“gTLD”) “.com” or “.info” and hyphens in the disputed domain names do not negate a finding of confusing similarity. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never received authorization, permission or license from Complainant to use its mark. Respondent is not commonly known by the disputed names based on the WHOIS information of record because the registrant is listed as “shone.” Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names misleadingly to divert consumers to Respondent’s websites to gather Best Buy customer gift card information. Respondent also mimics Complainant’s website, and uses the disputed domain names to commercially profit. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent’s operation of websites using marks identical to Complainant’s BEST BUY mark to lure consumers to these sites constitutes bad faith registration and use. Lastly, Respondent had actual and constructive knowledge of Complainant’s rights in its mark prior to registering the domain names at issue. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BEST BUY and uses it to market consumer electronics and appliances.
Complainant’s rights in its mark date back to at least 2008.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names resolve to web sites that displays Complainant’s mark and logo, mimics Complainant’s web site, and attempt to gather customer gift card information.
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.”).
The disputed domain names are confusingly similar to the BEST BUY mark, as they incorporate the mark entirely, and merely add the terms “check,” “card,” “gift card,” and “balance,” which describe Complainant’s business. Further, the domain names add hyphens and the gTLD “.com” or “.info” to the mark. Such additions to domain names do not distinguish the domain names sufficiently to prevent a finding of confusing similarity per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Consequently, the Panel finds the disputed domain names to each be confusingly similar to Complainant’s BEST BUY mark per Policy ¶ 4(a)(i).
Complainant has never granted Respondent license or authorization for the use of its mark. Respondent is not commonly known by the domain names: where a response is lacking, WHOIS information and the complainant’s assertions can be used to determine whether a respondent is commonly known by a domain name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information of record lists “shone” as the name of the registrant for the three disputed domain names. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names.
Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent mimics Complainant’s website and uses the disputed domain names to pass off as Complainant to gather customer gift card information. Such uses of domain names are not typically in accordance with Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (finding the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Consequently, the Panel finds that Respondent’s use of the disputed domain names 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). Further, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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 names.
Indeed, as already noted, Respondent attracts users to its web sites by creating a likelihood of confusion with Complainant’s mark to gather customer gift card information. Such a use can demonstrate bad faith under the Policy. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Accordingly, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent had actual knowledge of Complainant’s rights in its mark: the resolving websites display Complainant’s mark and logo, and mimic Complainant’s web site. While constructive knowledge is insufficient to support a finding of bad faith, actual knowledge is sufficient for a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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.”). Thus the Panel finds that Respondent registered and used the disputed domain names in bad faith on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <checkbestbuycardbalance.com>, <bestbuy-giftcard.info>, and <best-buy-balance.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 15, 2018
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