NoBull, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2112001977635
Complainant is NoBull, LLC (“Complainant”), represented by Andrew Skale of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tenisnobullbrasil.com>, <nobullretailerssouthafrica.com>, <nobull-sweden.com>, <nobullespana.com>, <scarpenobullitalia.com>, <nobull-spain.com>, <nobullnederland.com>, <nobull-australia.com>, <nobull-trainers.com>, <nobullskonorge.com>, <butynobullpolska.com>, <buynobullnz.com>, <nobull-espana.com>, <nobull-nederland.com>, <nobull-philippines.com>, <nobullcolombia.com>, <nobullindia.com>, <nobullisrael.com>, <nobullmalaysia.com>, <nobullromania.com>, <nobullrunningshoes.com>, <nobullshoesaustralia.com>, <nobullshoescanada.com>, <nobullshoesgreece.com>, <nobullshoessingapore.com>, <nobullskodanmark.com>, <nobulltenisbrasil.com>, <nobulltrainers-uk.com>, <nobulltrainersireland.com>, <zapatillasnobullargentina.com>, <nobull-schweiz.com>, <nobull-turkiye.com>, <nobullcipohu.com>, <nobullschoenen.com>, <nobulltrainersph.com>, <nobullnorge.com>, <nobullhrvatska.com>, <nobullrunners.com>, <nobullargentlna.com> and <nobulltenismexico.com>, (“the Domain Names”) registered with Alibaba.Com Singapore E-Commerce Private Limited.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2021. The Forum received payment on December 20, 2021.
On December 21, 2021 and December 22, 2021, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to the Forum that the Domain Names are registered with Alibaba.Com Singapore E-Commerce Private Limited and that Respondent is the current registrant of the Domain 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 December 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2022 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@tenisnobullbrasil.com, postmaster@nobullretailerssouthafrica.com, postmaster@nobull-sweden.com, postmaster@nobullespana.com, postmaster@scarpenobullitalia.com, postmaster@nobull-spain.com, postmaster@nobullnederland.com, postmaster@nobull-australia.com, postmaster@nobull-trainers.com, postmaster@nobullskonorge.com, postmaster@butynobullpolska.com, postmaster@buynobullnz.com, postmaster@nobull-espana.com, postmaster@nobull-nederland.com, postmaster@nobull-philippines.com, postmaster@nobullcolombia.com, postmaster@nobullindia.com, postmaster@nobullisrael.com, postmaster@nobullmalaysia.com, postmaster@nobullromania.com, postmaster@nobullrunningshoes.com, postmaster@nobullshoesaustralia.com, postmaster@nobullshoescanada.com, postmaster@nobullshoesgreece.com, postmaster@nobullshoessingapore.com, postmaster@nobullskodanmark.com, postmaster@nobulltenisbrasil.com, postmaster@nobulltrainers-uk.com, postmaster@nobulltrainersireland.com, postmaster@zapatillasnobullargentina.com, postmaster@nobull-schweiz.com, postmaster@nobull-turkiye.com, postmaster@nobullcipohu.com, postmaster@nobullschoenen.com, postmaster@nobulltrainersph.com, postmaster@nobullnorge.com, postmaster@nobullhrvatska.com, postmaster@nobullrunners.com, postmaster@nobullargentlna.com, postmaster@nobulltenismexico.com. Also on December 23, 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 January 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant, NoBull, LLC, is in the business of selling athletic apparel and equipment. Complainant has rights in the NOBULL mark based on registrations of the mark with the United States Patent and Trademark Office (“USPTO”). The Domain Names are identical and/or confusingly similar to Complainant’s NOBULL mark.
Respondent lacks rights and legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor is Respondent an authorized user or licensee of the NOBULL mark. Respondent does not use the Domain Names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses Complainant’s trademark in the Domain Names to attract consumers to its own websites offering competitive goods.
Respondent registered and is using the Domain Names in bad faith with actual knowledge of Complainant’s rights in the NOBULL mark because the Domain Names incorporate Complainant’s mark and were registered and are being used to confuse consumers into making purchases from competing sites offering competing goods. Respondent also failed to provide complete, accurate contact information to the WHOIS database.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the NOBULL mark based on registrations of the mark with the USPTO (e.g., Reg. No. 5,258,547, registered Aug. 8, 2017). The Panel finds each of the Domain Names to be confusingly similar to Complainant’s NOBULL mark because they all incorporate the mark in its entirety, together with a generic term or a country name or both, which do not suffice to distinguish any of the Domain Names from the mark. The inconsequential gTLD “.com” may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
All of the Domain Names were registered between June 5, 2021 and August 30, 2021. They resolve to websites which prominently display Complainant’s NOBULL mark, offer similar goods for sale and have the look and feel of Complainant’s website at “www.nobullproject.com”.
Of the 40 Domain Names, 32 were registered after August 18, 2021, when the same Respondent was served with a complaint from the same Complainant in relation to 13 similar domain names in NoBull, LLC v. Client Care / Web Commerce Communications Limited FA1959268 (Forum Sept.13, 2021). In those proceedings Respondent was found to have registered and used the domain names in bad faith and it was ordered that they be transferred to Complainant.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s NOBULL mark when Respondent registered each of the Domain Names and that Respondent has intentionally attempted impersonate Complainant to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tenisnobullbrasil.com>, <nobullretailerssouthafrica.com>, <nobull-sweden.com>, <nobullespana.com>, <scarpenobullitalia.com>, <nobull-spain.com>, <nobullnederland.com>, <nobull-australia.com>, <nobull-trainers.com>, <nobullskonorge.com>, <butynobullpolska.com>, <buynobullnz.com>, <nobull-espana.com>, <nobull-nederland.com>, <nobull-philippines.com>, <nobullcolombia.com>, <nobullindia.com>, <nobullisrael.com>, <nobullmalaysia.com>, <nobullromania.com>, <nobullrunningshoes.com>, <nobullshoesaustralia.com>, <nobullshoescanada.com>, <nobullshoesgreece.com>, <nobullshoessingapore.com>, <nobullskodanmark.com>, <nobulltenisbrasil.com>, <nobulltrainers-uk.com>, <nobulltrainersireland.com>, <zapatillasnobullargentina.com>, <nobull-schweiz.com>, <nobull-turkiye.com>, <nobullcipohu.com>, <nobullschoenen.com>, <nobulltrainersph.com>, <nobullnorge.com>, <nobullhrvatska.com>, <nobullrunners.com>, <nobullargentlna.com>, and <nobulltenismexico.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 19, 2022
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