Hobby Lobby Stores, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2101001928965
Complainant is Hobby Lobby Stores, Inc. (“Complainant”), represented by Clint B. Sloan of Hobby Lobby Stores, Inc., Oklahoma, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hobbylkbby.com> and <hovbbylobby.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2021; the Forum received payment on January 19, 2021.
On January 20, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hobbylkbby.com> and <hovbbylobby.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2021 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@hobbylkbby.com, postmaster@hovbbylobby.com. Also on January 22, 2021, 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 February 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a United States retailer selling products via physical retail stores and its website. Complainant has rights in the HOBBY LOBBY trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 2,866,317, registered July 27, 2004). Respondent’s <hobbylkbby.com> and <hovbbylobby.com> domain names are confusingly similar to Complainant’s HOBBY LOBBY trademark because they each misspell the trademark by adding or replacing letters.
Respondent lacks rights and legitimate interests in the <hobbylkbby.com> and <hovbbylobby.com> domain names. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to a website that offers consumer goods.
Respondent registered and uses the <hobbylkbby.com> and <hovbbylobby.com> domain names in bad faith. Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant. Additionally, Respondent uses the disputed domains to offer consumer goods in competition with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,866,317 HOBBY LOBBY (word), registered on July 27, 2004 for services in Intl Class 35
- No. 3,068,117 HOBBY LOBBY (word), registered on March 14, 2006 for services in Intl Class 35
- No. 4,280,022 HOBBY LOBBY (word), registered on January 22, 2013 for services in Intl Class 35
The disputed domain names <hobbylkbby.com> and <hovbbylobby.com> were registered on December 11, 2020.
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”).
The Complainant asserts rights in the HOBBY LOBBY trademark through its registration with the USPTO. Registration of a trademark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g. Reg. 2,866,317, registered July 27, 2004). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hobbylkbby.com> and <hovbbylobby.com> domain names are confusingly similar to Complainant’s HOBBY LOBBY trademark because they each misspell the trademark by adding or replacing letters. Misspelling a trademark and appending a generic top level domain (“gTLD”) is generally insufficient to negate confusing similarity between a domain name and a trademark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel notes the Complainant’s statement that the <hobbylkbby.com> domain name merely replaces the second “o” in the trademark with a “k,” and the <hovbbylobby.com> domain name simply adds the letter “v” to the trademark. Thus, the Panel find that both the disputed domain names are at least confusingly similar to the Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
While not specifically argued by the Complainant, the Panel notes that, in the absence of a response, WHOIS information may be used to determine if a respondent is commonly known by a domain name per Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). In the present case, the WHOIS information of record identifies the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <hobbylkbby.com> and <hovbbylobby.com> domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use and instead Respondent diverts Internet traffic to a website that offers consumer goods. Use of a disputed domain name to redirect Internet users is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), especially when the site competes with the complainant. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage at the disputed domain names, claiming it is used for online retail store services featuring a wide variety of consumer goods. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <hobbylkbby.com> and <hovbbylobby.com> domain names in bad faith because Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names to the Complainant. Intent to sell a disputed domain name in excess of out-of-pocket costs related to the domain name may evidence bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant does not provide evidence of an offer to sell any of the disputed domain names but instead argues that the similarity between the domain names and the trademark suggest that Respondent registered the domains to sell them to Complainant. The Panel is not convinced by these arguments, especially as they are not substantiated by any evidence/documentation (such as, for example, if the Respondent have been involved in a number of similar domain name disputes), and can therefore not agree with the Complainant on this point.
Complainant also argues that Respondent registered and uses the <hobbylkbby.com> and <hovbbylobby.com> domain names in bad faith because Respondent uses the disputed domains to offer consumer goods in competition with Complainant. Use of a disputed domain name to divert users to a respondent’s webpage for the sale of goods is generally evidence of bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of the resolving webpage at the disputed domains, claiming it is used for online retail store services featuring a wide variety of consumer goods. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hobbylkbby.com> and <hovbbylobby.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 1, 2021
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