Pit Barrel Cooker Co., LLC v. Bricklina Mandy
Claim Number: FA2108001961122
Complainant is Pit Barrel Cooker Co., LLC (“Complainant”), represented by Mario C. Vasta of Fennemore Craig, P.C., Arizona, USA. Respondent is Bricklina Mandy (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pitbarrel-factory.store> (“Domain Name”), registered with Dynadot, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 25, 2021; the Forum received payment on August 25, 2021.
On August 26, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <pitbarrel-factory.store> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@pitbarrel-factory.store. Also on August 30, 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 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 cancelled.
A. Complainant
Complainant, Pit Barrel Cooker Co., LLC, sells barbecue and grill products and accessories. Complainant has rights in the PIT BARREL and PIT BARREL COOKER marks based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,947,553, registered Dec. 31, 2019 and Reg. No. 5,293,899, registered Sep. 26, 2017, respectively). Respondent’s <pitbarrel-factory.store> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s marks in their entirety, replacing the word “cooker” with “factory,” adding a hyphen between “pit barrel” and “factory,” and adding the “.store” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <pitbarrel-factory.store> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant licensed or permitted Respondent to use the PIT BARREL and PIT BARREL COOKER marks. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead Respondent deceives and defrauds customers who believe they are purchasing genuine products from Complainant. The website at the <pitbarrel-factory.store> domain name (“Respondent’s Website”) passes itself off as an official website of Complainant offering legitimate Complainant products. However Complainant has received multiple reports of individuals who attempt to purchase products from Respondent’s Website (on the understanding that they are purchasing genuine Complainant products) but who never received any products from Respondent.
Respondent registered and uses the <pitbarrel-factory.store> domain name in bad faith because Respondent attempts to deceive customers for commercial gain, thereby disrupting Complainant’s business. Specifically, Respondent creates the impression that it is selling Complainant’s genuine goods, and then Respondent defrauds individuals by collecting payment from customers without delivering the goods ordered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PIT BARREL mark. The Domain Name is confusingly similar to Complainant’s PIT BARREL mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 PIT BARREL mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,947,553, registered Dec. 31, 2019). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <pitbarrel-factory.store> domain name is confusingly similar to Complainant’s PIT BARREL mark because it incorporates Complainant’s mark in its entirety, adding only the generic term “-factory” and the gTLD “.store.” Addition of generic or descriptive words, a hyphen and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PIT BARREL mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Bricklina Mandy” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive which does not provide Respondent with rights or legitimate interests. Complainant alleges, and provides clear evidence to support its allegation, that prior to the commencement of the proceeding Respondent used the Domain Name for a website that passed itself off as an official website of the Complainant and purported to offer discounted versions of Complainant’s goods. However Respondent’s Website was actually a method of committing fraud as consumers who purported to purchase products from the Respondent’s Website never received the products ordered. Use of the disputed domain name to purportedly sell the complainant’s products and attempt a fraud does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, August 9, 2021, Respondent had actual knowledge of Complainant’s PIT BARREL mark since the Respondent’s Website passed itself off as an official website of the Complainant including reproducing images of Complainant’s products and making repeated references to Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the PIT BARREL mark and use it to redirect visitors to a website purporting to sell goods in direct competition with the Complainant under the PIT BARREL mark other than to take advantage of Complainant’s reputation in the PIT BARREL mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses or has used the Domain Name to impersonate Complainant to engage in fraud by deceiving customers into paying for products that appear to be Complainant’s products, but which Respondent never delivered. Use of a disputed domain name to impersonate a complainant in furtherance of a fraud is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
The Panel finds Complainant has satisfied 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 <pitbarrel-factory.store> domain name be CANCELLED.
Nicholas J.T. Smith, Panelist
Dated: September 27, 2021
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