The Step2 Company, LLC v. Joan Labarbera
Claim Number: FA2103001936026
Complainant is The Step2 Company, LLC (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Joan Labarbera (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <step2kidjob.com>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <step2kidjob.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@step2kidjob.com. Also on March 10, 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 April 1, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the STEP 2 mark and the STEP 2 logo trademarks acquired through its portfolio of trademark registrations described below and use of the mark in its manufacture and sale of pre-school and toddler toys and plastic products since it was established in 1991, including through its website at <www.step2.com>.
Complainant submits that the disputed domain name <step2kidjob.com> is confusingly similar to its STEP 2 mark, as it wholly incorporates the mark, and the only differences are the additions of the generic terms “kid” and “job”.
Complainant submits that panels established under the Policy have determined that generic terms, such as “kid” and “job” fail to distinguish a domain name from a complainant’s trademark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Astound LLC c/o Kevin O'Brien, FA1006001332414 (Forum July 29, 2010) (finding that the addition of “career” and “fair” did not distinguish the <statefarmcareerfair.com> domain name from the complainant’s STATE FARM trademark as the elimination of spaces, the inclusion of a gTLD such as “.com” and generic terms do not avoid confusing similarity).
Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com> does not distinguish the disputed domain name from the STEP 2 mark. See Lamps Plus, Inc.; see also Caterpillar Inc. v. ruth weinstein, FA1802001770352 (Forum Mar. 7, 2018) (finding Respondent’s appending of “brand” and “.com” to Respondent’s CATERPILLAR mark was insufficient to defeat a test of confusing similarity).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name; and that Respondent has no basis to claim to be commonly so known because Complainant’s United States federal trademark registrations provide it with the exclusive right to use the STEP 2 mark in connection with the goods identified in the registrations. See State Farm Mutual Automobile Insurance Company v. Super Privacy Service LTD c/o Dynadot, FA2001001878047 (Forum Feb. 20, 2020) (“Complainant has rights in the STATE FARM mark based upon its registration with the USPTO.”).
Complainant adds that the relevant WHOIS information identifies “Domain Administrator” as the registrant of record, which is not similar to the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Additionally Complainant submits that Respondent is not associated with, sponsored by or endorsed by Complainant in any way, nor has Complainant licensed or authorized Respondent to register the disputed domain name or to use the STEP 2 mark for Respondent’s business or any other purpose.
As of March 8, 2021, the disputed domain name <step2kidjob.com> resolved to a website with no content, but merely a white label error screen noting “This site can’t be reached,” and thus provides no suggestion that the Respondent may be known by the <step2kidjob.com> domain. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where neither the WHOIS information nor any other information in the record gave any indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant adds that the dormancy of the web page at Respondent’s domain shows Respondent lacks rights or legitimate interests in the domain name. See TMP Int’l, Inc. v. Baker Enters., FA0310000204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent’s passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
However, referring to screen captures annexed to the Complainant as evidence, Complainant furthermore submits that the subdomain <stores.step2kidjob.com> resolves to an active website that prominently displays Complainant’s STEP 2 trademark and its design logo, yet provides no other Respondent-identifying information. The website at the subdomain purports to present STEP 2 branded products for sale at discounted prices and Complainant adds that it is being used to direct potential consumers to Respondent’s website and pass itself off as Complainant’s site, in order to profit from Respondent’s sales of Complainant’s genuine or counterfeit products via the infringing domain.
Complainant contends that therefore Respondent is not using the disputed domain name for any legitimate business, nor it is being used in connection with a bona fide offering of goods and services. See State Farm Mutual Automobile Insurance Company v. J & B, Inc., FA 94804 (Forum Jan. 24, 2000) (transferring the domain name <Mystatefarm.com> to the complainant where the respondent was not associated with complainant, not doing business under the domain name, not commonly known under the domain name, and not using the domain name in connection with a bona fide offering of goods or services).
Complainant also alleges that the disputed domain name was registered in bad faith, arguing Respondent’s registration and use of the disputed domain name <step2kidjob.com> occurred decades after Complainant began using and registered its STEP 2 marks. Complainant asserts that there can be no dispute that it has prior rights to the mark. There is no doubt Respondent had and has actual knowledge of Step2’s STEP 2 mark because the subdomain is being used to target traffic intended for Complainant and to purport to offer Complainant’s genuine or counterfeit products for sale.
Referring to a screen capture annexed to the Complainant, Complainant contends that the disputed domain name <step2kidjob.com> currently remains inactive and the web page to which it resolves displays no actual content.
Complainant submits that such non-use of and inactivity at the <step2kidjob.com> domain as a website address is evidence of bad-faith registration and use. See State Farm Mutual Automobile Insurance Company v. Super Privacy Service LTD c/o Dynadot, FA2001001878047 (Forum Feb. 13, 2020) (“Respondent has registered and uses its <financialsstatefarm.com> domain name in bad faith under to Policy ¶ (a)(iii) because Respondent has failed to make an active use of the domain name”).
Complainant adds that the use to which the subdomain <stores.step2kidjob.com> has been put makes the bad faith registration and use of the disputed domain name clear. The webpages found at and within the Respondent’s subdomain prominently feature Complainant’s STEP 2 trademark and logo and purport to display STEP 2 branded products for sale. Additionally, Complainant contends that Respondent is impersonating Complainant on the website’s “About Us” page and has even copied exact language from Complainant’s official website.
Complainant argues that Respondent’s offering of what appear to be either genuine STEP 2 branded products, without Complainant’s authorization, or counterfeit products bearing the STEP 2 trademark and logo, is an attempt to mislead the visiting public, which further constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant asserts that of most concern is that the disputed domain name is being used for a fraudulent purpose. While Complainant admits that it does not have tangible evidence of fraud, it contends that this Panel may take an inference from a number of clues suggesting fraudulence: Respondent shares a bogus contact e-mail address in various locations across its website and provides a mailing address associated with a competitor of Complainant at the website’s “Contact Us” page. In this regard Complainant refers to a screen capture of the website to which the disputed domain name resolves and argues that It seems probable that Respondent is using the disputed domain to operate a phishing scam.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of pre-school and toddler toys for which it owns and uses the STEP 2 mark and is the owner of a portfolio of trademark registrations including:
· United States registered trademark STEP 2, registration number 1,705,038 registered on the Principal Register on Aug. 4, 1992 for goods in international class 20;
· United States registered trademark STEP 2 registration number 1,892,697, registered on the Principal Register on May 2, 1995 for goods in international class 28.
In addition Complainant has registered its distinctively designed STEP 2 device mark on the Principal Registered as United States trademark registration number 1,756, 878, registered on March 9, 1993 for goods in international class 20 and United States trademark registration number 1,877, 170 registered on January 31, 1995 for goods in international class 28. These registrations are referred to below as “Complainant’s logo trademarks”
Complainant has an established Internet presence and maintains its principal website at www.step2.com.
The disputed domain name <step2kidjob.com> was registered on February 28, 2021 and resolves to a white label inactive website. However the subdomain <stores.step2kidjob.com> resolves to a website that purports to offer Complainant’s goods bearing the STEP 2 trademark at discount prices.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
The Registrar confirmed that Respondent, who had availed of a privacy service to conceal her identity on the published WhoIs, is the registrant of the disputed 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 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 has adduced clear, convincing, and uncontested evidence that it has rights in the STEP 2 mark and the STEP 2 logo trademarks acquired through its portfolio of trademark registrations described below.
The disputed domain name consists of Complainant’s STEP 2 mark in its entirety in combination with the generic terms “kid” and “job” followed by the gTLD extension <.com>.
Complainant’s STEP 2 mark is the initial, dominant, and only distinctive element in the disputed domain name. The generic terms “kid” and “job” add no distinctive character to the disputed domain name and in the circumstances of this case the gTLD extension <.com> would be perceived as a necessary technical element for a domain name.
In these circumstances this Panel finds that the disputed domain name is confusingly similar to the STEP 2 mark in which Complainant has rights.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent has no basis to claim to be commonly known by the disputed domain name because Complainant’s federal trademark registrations provide it with the exclusive right to use the STEP 2 mark in connection with the identified goods;
· the relevant WHOIS information identifies “Joan Labarbera” as the registrant of record, which is not similar to the disputed domain name;
· Respondent is not associated with, sponsored by or endorsed by Complainant in any way;
· Respondent has not licensed or authorized Respondent to register the disputed domain name or to use the STEP 2 mark for Respondent’s business or any other purpose;
· as of March 8, 2021, the disputed domain name <step2kidjob.com> resolved to a website with no content, but merely a white label error screen noting “This site can’t be reached,” and thus provides no suggestion that the Respondent may be known by the disputed domain name;
· the dormancy of the web page to which the disputed domain resolves shows Respondent lacks rights or legitimate interests in the domain name;
· the screen captures annexed to the Complainant evidence that the subdomain <stores.step2kidjob.com> resolves to an active website that prominently displays Complainant’s STEP 2 trademark and its design logo without authorization;
· said website does not identify Respondent by the disputed domain name;
· the subdomain is therefore being used to direct potential consumers to Respondent’s website and pass itself off as Complainant’s site, in order to profit from Respondent’s sales of Complainant’s genuine or counterfeit products via the disputed domain name;
· therefore, Respondent is not using the disputed domain name for any legitimate business, nor it is being used in connection with a bona fide offering of goods and services.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or interests in the subject domain name, the burden of production shifts to the respondent to establish such rights.
No timely response has been received and therefore Respondent has failed to discharge the burden of production. In these circumstances this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered decades after Complainant began using and registered its STEP 2 mark and acquired prior rights. On the balance of probabilities, the registrant of the disputed domain name had actual knowledge of Complainant’s STEP 2 mark. The website established by Respondent at the subdomain address purports shows that very soon after the registration of the disputed domain name Respondent established a website purporting to offer Complainant’s goods for sale. It is improbable that anyone choosing and registering the confusingly similar disputed domain name would be unaware of Complainant’s Internet presence and in particular its website at <www.step2.com>.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered with Complainant’s name, mark, reputation, and goodwill in mind, intending to target and divert Internet traffic intended for Complainant.
While the disputed domain name <step2kidjob.com> itself remains currently inactive and the web page to which it resolves displays only a white label message, the subdomain <stores.step2kidjob.com> resolves to a website that prominently features Complainant’s STEP 2 trademark and Complainant’s logo trademarks, purports to display Complainant’s STEP 2 branded products for sale at discounted prices, purports to impersonate Complainant on the website’s “About Us” page, and copies exact language from Complainant’s official website.
While as Complainant has alleged, there are many “clues” that suggest that the goods that Respondent purports to offer for sale are counterfeit and that the disputed domain name is being used for the purposes of phishing, it is not necessary to base this decision on those allegations.
Respondent’s website is using Complainant’s trademarks including Complainant’s logo trademarks on the website along with other content to impersonate Complainant. There is nothing on the website to suggest that it is not hosted by or in some way associated with Complainant and there are links to Complainant’s competitors. This is sufficient to make a finding that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <step2kidjob.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 2, 2021
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