Boygenius Inventions, LLC v. Mohammad Hamidul Islam Bhuban
Claim Number: FA1909001861492
Complainant is Boygenius Inventions, LLC (“Complainant”), represented by Matthew G. McKinney of Allen, Dyer, Doppelt and Gilchrist, P.A., Florida, USA. Respondent is Mohammad Hamidul Islam Bhuban (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wpbeginnertips.com>, registered with NameCheap, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2019; the Forum received payment on September 10, 2019.
On September 10, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <wpbeginnertips.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2019 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@wpbeginnertips.com. Also on September 12, 2019, 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 October 4, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 uses the WPBEGINNER mark in connection with providing an online forum for website development resources. Complainant has rights in the WPBEGINNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,854,860, registered Nov. 17, 2015). Respondent’s <wpbeginnertips.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds a generic top-level domain (“gTLD”) to the mark.
Respondent lacks rights or legitimate interests in the <wpbeginnertips.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed, or permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <wpbeginnertips.com> domain name to promote services which compete with Complainant’s business.
Respondent registered and uses the <wpbeginnertips.com> domain name in bad faith. Respondent uses the disputed domain name to promote its own web services in direct competition with Complainant. Respondent uses the disputed domain name to host content similar to Complainant’s website in order to attract, for commercial gain, Internet users to Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Boygenius Inventions, LLC (“Complainant”), of West Palm Beach Florida, USA. Complainant is the owner of a domestic registration for the stylized mark WPBEGINNER, that Complainant has used continuously since at least as early as 2009 in connection with its provision of on-line forums for web site development resources. Complainant has also owned and operated its on-forums from its website since 2009 which can be found at its registered domain <wpebeginner.com>.
Respondent is Mohammad Hamidul Islam Bhuban (“Respondent”), of Chittagong, Bangladesh. Respondent’s registrar’s address is indicated as unknown. The Panel notes that Respondent registered the <wpbeginnertips.com> domain name on or about January 30, 2019.
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”).
Complainant asserts rights in the WPBEGINNER mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of the USPTO registration of the WPBEGINNER mark (e.g. Reg. No. 4,854,860, registered Nov. 17, 2015). The Panel here finds that Complainant has established rights in the WPBEGINNER mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <wpbeginnertips.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds a gTLD to the mark. The Complainant argues that the <wpbeginner.org> domain name is identical to Complainant’s mark however the at-issue domain name is <wpbeginnertips.com>. Thus, while not argued by Complainant, the disputed domain name also adds the generic term “tips” in addition to the “.com” gTLD. The addition of a generic term and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel here finds that the <wpbeginnertips.com> domain name is confusingly similar to the WPBEGINNER mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <wpbeginnertips.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed, or permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Mohammad Hamidul Islam Bhuban,” and there is no other evidence to suggest that Respondent was authorized to use the WPBEGINNER mark. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant asserts Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <wpbeginnertips.com> domain name to promote services which compete with Complainant’s business. Use of a disputed domain name to directly compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”). Complainant provides a screenshot of the resolving webpage which Complainant argues displays content related to web development competitive to Complainant’s business. The Panel here finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <wpbeginnertips.com> domain name in bad faith because Respondent uses the disputed domain name to promote its own web services in direct competition with Complainant. Using a disputed domain name to offer competing goods or services can disrupt a complainant’s business and demonstrate bad faith registration and use per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). The Panel again notes Complainant provides a screenshot of the resolving webpage which Complainant argues displays content related to web development competitive to Complainant’s business. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues Respondent registered and uses the <wpbeginnertips.com> domain name in bad faith because Respondent uses the disputed domain name to host content similar to Complainant’s website in order to attract Internet users to Respondent’s website for commercial gain. Using a confusingly similar domain name to divert Internet users to a respondent’s website for commercial gain can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant contends because the disputed domain name offers content similar to Complainant’s web development services, Internet users searching for Complainant’s website may be diverted to Respondent’s commercial website. The Panel finds Complainant’s evidence supports a finding that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wpbeginnertips.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 18, 2019
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