NoBull, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2108001959268
Complainant is NoBull, LLC (“Complainant”), represented by Andrew Skale of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Massachusetts, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <nobullireland.com>, <nobullchile.com>, <nobullgreece.com>, <nobullfrance.com>, <nobullargentina.com>, <nobullphilippines.com>, <nobullportugal.com>, <nobullsingapore.com>, <nobullshoesindia.com>, <nobull-canada.com>, <nobullmexico.com>, <nobullpolska.com>, and <nobullschweiz.com>, (‘the Domain Names’) registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 12, 2021; the Forum received payment on August 12, 2021.
On August 16, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <nobullireland.com>, <nobullchile.com>, <nobullgreece.com>, <nobullfrance.com>, <nobullargentina.com>, <nobullphilippines.com>, <nobullportugal.com>, <nobullsingapore.com>, <nobullshoesindia.com>, <nobull-canada.com>, <nobullmexico.com>, <nobullpolska.com>, and <nobullschweiz.com> Domain Names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 August 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@nobullireland.com, postmaster@nobullchile.com, postmaster@nobullgreece.com, postmaster@nobullfrance.com, postmaster@nobullargentina.com, postmaster@nobullphilippines.com, postmaster@nobullportugal.com, postmaster@nobullsingapore.com, postmaster@nobullshoesindia.com, postmaster@nobull-canada.com, postmaster@nobullmexico.com, postmaster@nobullpolska.com, postmaster@nobullschweiz.com. Also on August 18, 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 September 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 owns the trade mark NO BULL registered, inter alia, in the USA with first use recorded as 2013.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s trade mark containing it in its entirety and merely adding generic country names and/or a hyphen and/or the generic term ‘shoes’ and the gTLD “.com” which do not distinguish the Domain Names from the Complainant’s mark.
Respondent is not commonly known by the Domain Names and is not authorized by the Complainant. The web site connected with the Domain Names is using the Complainant’s NO BULL trade mark and logo as a masthead and another of the Complainant’s trademarks to cause confusion with actual knowledge of the Complainant. To use a Domain Name to offer competing products is not legitimate. It is registration and use in bad faith. The Respondent has also given incomplete details to The WhoIs database which is also an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark NO BULL registered, inter alia, in the USA with first use recorded as 2013.
The Domain Names registered in 2021 have been pointed to a commercial site using the Complainant’s mark and logo as a masthead and another of the Complainant’s trademarks to suggest that the site attached to the Domain Names is an official site of the 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”).
The Domain Names consists of the Complainant's NO BULL mark (which is registered, inter alia, in USA for clothing, shoes and bags with first use recorded as 2013), generic terms (either country names and/or the word ‘shoes’) and/or a hyphen and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds generic or geographical terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy 4(a)(i) analysis.”). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).). Accordingly the Panel holds that the addition of generic country names and/or the generic word ‘shoes’ and/or a hyphen to the Complainant’s trade mark in the Domain Names does not prevent confusing similarity between the Domain Names and the Complainant’s mark.
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Names uses the Complainant's NO BULL mark and its logo as a masthead and another of the Complainant’s trademarks. It does not make it clear that there is no commercial connection with the Complainant and the web site appears official. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s NO BULL mark and logo as a masthead and another of the Complainant’s trademarks giving the impression that the site attached to the Domain Names is official. The use of the Complainant’s logo shows that the Respondent is aware of the Complainant its rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's NO BULL trade mark as to the source, sponsorship, affiliation or endorsement of the web site and the products and services offered on it likely to disrupt the business of the Complainant. 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).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).There is no need to consider additional alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nobullireland.com>, <nobullchile.com>, <nobullgreece.com>, <nobullfrance.com>, <nobullargentina.com>, <nobullphilippines.com>, <nobullportugal.com>, <nobullsingapore.com>, <nobullshoesindia.com>, <nobull-canada.com>, <nobullmexico.com>, <nobullpolska.com>, and <nobullschweiz.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 13, 2021
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