Dianna Rojas v. Jesus Sagastizabal
Claim Number: FA2011001920294
Complainant is Dianna Rojas (“Complainant”), represented by Edan Weiner of Malloy & Malloy, P.L., Florida. Respondent is Jesus Sagastizabal (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bouncebydiannarojas.com>, registered with GoDaddy.com, LLC.
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 November 11, 2020; the Forum received payment on November 11, 2020.
On November 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bouncebydiannarojas.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@bouncebydiannarojas.com. Also on November 16, 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. Respondent did however send an email to the Forum, see below.
On December 14, 2020, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it uses the BOUNCEBYDIANNAROJAS mark in connection with goods and services in the exercise and fitness industry, specifically including but not limited to “bounce”/fitness boots utilized and purchased by consumers for effective and entertaining fitness workouts and programs. Complainant has common law rights to the BOUNCEBYDIANNAROJAS since at least as early as 2016 because Complainant has expended significant money, time, and effort in advertising, promoting, marketing, and selling “bounce” boots and fitness products bearing the “Bounce by Dianna Rojas” mark.
Complainant alleges that the disputed domain name is identical or confusingly similar to its BOUNCEBYDIANNAROJAS mark as it wholly incorporates Complainant’s mark and adds the generic top-level domain (“.com”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BOUNCEBYDIANNAROJAS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to compete with Complainant. Specifically, Complainant hired Respondent to promote and sell the “bounce”/fitness boots and related fitness products sold in connection with Complainant’s trademark and business. While employed, Respondent, without authorization from Complainant, registered the disputed domain name on his own behalf. After termination of employment, Respondent has refused to transfer ownership and control of the disputed domain name to Complainant. Respondent has since commenced employment and/or an affiliation with one of Complainant’s direct competitors, which sells identical fitness boots at nearly identical price points as those used in connection with Complainant’s trademark. Respondent is currently using the disputed domain name to redirect Internet users to the competitor’s website, thereby disrupting Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, and endorsement of complainant’s Trademark and the disputed domain name.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. First, Respondent has offered to sell the disputed domain name and Respondent uses the disputed domain name to compete with Complainant. Additionally, Respondent is a former employee of Complainant who refuses to transfer ownership and control of the disputed domain name to Complainant. Further, Respondent initially used the disputed domain name as a platform to slander Complainant’s business alleging that it is a “scam,” that Complainant is not “honest nor ethical with their leads, and they don’t even own the domain with the brand of the boots,” referring to the disputed domain name. Lastly, Respondent registered the disputed domain name based on opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states: “Tell Dianna to pay me 2000USD for commissions not paid + 1000usd of salaries not paid +100usd for the domain expenses. I have been very quiet, till now, if you proceed with the case with no solution on my side, I won't be quiet anymore, and will publish everything she owes me, with the mails threatening me.”
Complainant has rights in the mark BOUNCEBYDIANNAROJAS dating back to 2016.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that offers for sale competing products. Respondent is a former employee of Complainant.
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 common law trademark rights in the BOUNCEBYDIANNAROJAS mark since at least as early as 2016 because Complainant has expended significant money, time, and effort in advertising, promoting, marketing, and selling “bounce” boots and fitness products bearing the “Bounce by Dianna Rojas” mark. Complainant provides evidence to support that assertion. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”)
According to 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive <www.archive.org> in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
Here, Complainant provides evidence of longstanding use and promotional material/advertising. A search on <archive.com> shows that Complainant promoted its products, and its mark, since 2016 on the website <bounceboots.com>. Therefore, the Panel finds that Complainant has demonstrated rights in the BOUNCEBYDIANNAROJAS mark per Policy ¶ 4(a)(i).
The disputed domain name wholly incorporates Complainant’s mark and merely adds the generic top-level domain (“.com”). Adding a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the gTLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed Respondent to use its BOUNCEBYDIANNAROJAS mark in any way. Respondent is not commonly known by the disputed domain name: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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); see also 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). Here, the WHOIS information for the disputed domain name lists the registrant as “Jesus Sagastizabal”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant provides evidence showing that the disputed domain name redirects to the website of a competitor. Using a confusingly similar domain name to divert internet users to a competing website 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 Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also 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)”). Therefore, the Panel finds that Respondent fails to 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). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
It its email to the Forum, Respondent appears to indicate that it registered the disputed domain name in order to put pressure on Complainant regarding payment of alleged past due amounts. This is not a legitimate use of a domain name. See Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where Respondent attempted to blackmail the Complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to the Complainant’s employees and customers). Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Complainant alleges that Respondent offered to sell the disputed domain name, but it does not produce any evidence of an actual offer to sell; instead, it merely produces evidence of threats to sell the disputed domain name. This is not sufficient to establish bad faith under Policy ¶ 4(b)(i).
Complainant provides evidence showing that Respondent used the disputed domain name, at one point, to resolve to a web site containing criticism of Complainant. Such use is not necessarily bad faith use under the Policy, see 2.6 of the WIPO Jurisprudential Overview 3.0. For the reasons set forth below, the Panel will not consider this allegation any further.
As already noted, Respondent currently uses the disputed domain name to compete with Complainant. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: Respondent is a former employee of Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <bouncebydiannarojas.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 15, 2020
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