BISSELL Inc. v. Fatemeh ABOUTORABI / EVA AESTHETICA LTD / Kevin Laurence John DUCK / BIN CLEANING INDUSTRIES LLP / Deborah Michelle BISSELL / BISSELL HOLDINGS LTD / Patrick BAILEY / BIS ELECTRICAL LIMITED / Martin James MATTHEWS / BISSELL BROWN BIRMINGHAM LTD
Claim Number: FA2212002025096
Complainant is BISSELL Inc. (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, USA. Respondent is Fatemeh ABOUTORABI / EVA AESTHETICA LTD / Kevin Laurence John DUCK / BIN CLEANING INDUSTRIES LLP / Deborah Michelle BISSELL / BISSELL HOLDINGS LTD / Patrick BAILEY / BIS ELECTRICAL LIMITED / Martin James MATTHEWS / BISSELL BROWN BIRMINGHAM LTD (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bissellpro.com>, <bissellprofr.com>, <bissellpro-us.com>, <bissellpro-es.com>, <bissellpro-it.com>, <bissellpro-de.com>, <bissellpro-uk.com>, <bisellprofr.com>, <bisselpro-es.com>, <bisselpro-it.com>, registered with Cloudflare, Inc.; Key-Systems Gmbh.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 22, 2022; Forum received payment on December 22, 2022.
On December 22, 2022, Cloudflare, Inc.; Key-Systems Gmbh confirmed by e-mail to Forum that the <bissellpro.com>, <bissellprofr.com>, <bissellpro-us.com>, <bissellpro-es.com>, <bissellpro-it.com>, <bissellpro-de.com>, <bissellpro-uk.com>, <bisellprofr.com>, <bisselpro-es.com>, <bisselpro-it.com> domain names are registered with Cloudflare, Inc.; Key-Systems Gmbh and that Respondent is the current registrant of the names. Cloudflare, Inc.; Key-Systems Gmbh has verified that Respondent is bound by the Cloudflare, Inc.; Key-Systems Gmbh 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 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2023 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@bissellpro.com, postmaster@bissellprofr.com, postmaster@bissellpro-us.com, postmaster@bissellpro-es.com, postmaster@bissellpro-it.com, postmaster@bissellpro-de.com, postmaster@bissellpro-uk.com, postmaster@bisellprofr.com, postmaster@bisselpro-es.com, postmaster@bisselpro-it.com. Also on January 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant notes that the disputed domain names were all registered within less than two months of each other, and some on the same day. Nine of the ten domain names have the same registrar, several have the same IP location and address, two have the same email in the contact information, and all have addresses in Great Britain. Further, the domain names are all constructed similarly: the BISSELL mark (sometimes misspelled), the word “pro,” and then a geographical abbreviation. Lastly, many of the disputed domain names resolve to identical homepages.
A. Complainant
Complainant, Bissel Inc., sells floor care products, such as vacuum cleaners. Complainant has rights in the BISSELL mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 698,093, which was registered May 24, 1960). Respondent’s <bissellpro.com>, <bissellprofr.com>, <bissellpro-us.com>, <bissellpro-es.com>, <bissellpro-it.com>, <bissellpro-de.com>, <bissellpro-uk.com>, <bisellprofr.com>, <bisselpro-es.com>, and <bisselpro-it.com> domain names (hereinafter referred to as the “Disputed Domain Names”) are identical or confusingly similar to the BISSELL mark as they all use the entire BISSELL mark, albeit misspelled in three instances, with the generic term “pro,” a geographic code, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the Disputed Domain Names since Respondent is not licensed or authorized to use Complainant’s BISSELL mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is passing off as Complainant and offering for sale competing goods. In addition, several of the domain names are not actively used.
Respondent registered and uses the Disputed Domain Names in bad faith by merely by using the BISSELL mark. Further, Respondent is passing off as Complainant and offering competing goods for sale, which may be unauthorized or counterfeit goods of Complainant. Lastly, some of the domain names resolve to inactive sites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is BISSELL Inc. (“Complainant”), of Grand Rapids, MI, USA. Complaint is the owner of numerous domestic and international registrations for its mark BISSELL. Complainant has used its mark continuously since at least as early as 1960 in connection with its provision of floor care products including vacuum cleaners, and carpet cleaning extractors.
Respondent is Fatemeh Aboutorabi / Eva Aesthetica Ltd / Kevin Laurence John Duck / Bin Cleaning Industries Llp / Deborah Michelle Bissell / Bissell Holdings Ltd / Patrick Bailey / Bis Electrical Limited / Martin James Matthews / Bissell Brown Birmingham Ltd (“Respondent”), whose address(es) reflect(s) location in the United Kingdom.
The Panel notes the registrations for the disputed domains were made on or about the dates listed below.
<bissellpro.com>: October 21, 2022.
<bissellprofr.com>: November 15, 2022.
<bissellpro-us.com>: November 18, 2022.
<bissellpro-es.com>: November 10, 2022.
<bissellpro-it.com>: November 15, 2022.
<bissellpro-de.com>: November 18, 2022.
<bissellpro-uk.com>: November 18, 2022.
<bisellprofr.com>: November 19, 2022.
<bisselpro-es.com>: December 3, 2022.
<bisselpro-it.com>: December 3, 2022.
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 claims rights in the BISSELL mark through multiple trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 698,093, which was registered May 24, 1960). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel here finds that Complainant has demonstrated rights in the BISSELL mark per Policy ¶ 4(a)(i).
Complainant argues the Disputed Domain Names are identical or confusingly similar to the BISSELL mark. When a disputed domain name incorporates an entire mark, additional terms, including generic and geographic terms, are insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). In addition, common misspellings do not adequately distinguish a disputed domain name from a mark. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). Finally, hyphens and gTLDs are disregarded for purposes of Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Here the disputed domain names all incorporate the BISSELL mark, even though misspelled in three instances (<bisellprofr.com> eliminates an “s”; <bisselpro-es.com> and <bisselpro-it.com> eliminate an “l”). All the domain names also add the generic term “pro,” a geographic abbreviation (e.g., “fr” for France and “it” for Italy), and the “.com” gTLD. Some of the domain names further add a hyphen. The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BISSELL mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the BISSELL mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. Here, based on Respondent’s failure to provide any evidence to the contrary, the Panel finds no basis to determine Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Where a respondent appears to be commonly known by a disputed domain name but fails to provide a response with evidence to that effect, the Panel may find that the respondent is not commonly known by the disputed domain name. See La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Here, the WHOIS information list the registrants as “Fatemeh Aboutorabi / Eva Aesthetica Ltd,” “Kevin Laurence John Duck / Bin Cleaning Industries Llp,” “Deborah Michelle Bissell / Bissell Holdings Ltd,” “Patrick Bailey / Bis Electrical Limited,” Or “Martin James Matthews / Bissell Brown Birmingham Ltd.” Further, Respondent failed to provide evidence that they are known by “BISSELL” and there is no evidence to suggest that Respondent was authorized, licensed, or otherwise permitted to use the BISSELL mark. The Panel here finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is deceiving potential customers by passing off as Complainant through a site that mimics Complainant and its services. Previous Panels have found that use of a domain name to divert customers away from a complainant to a site that passes itself off as a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
Complainant here provides screenshots of the resolving sites, four of which use the BISSELL mark and display and purport to sell BISSELL products. Those four are at (<bissellprofr.com>, <bissellpro-es.com>, <bissellpro-it.com>, and <bisselpro-it.com>). Complainant also provides emails from customers confused and deceived by Respondent’s sites. The Panel here finds that Respondent is engaged in passing off as Complainant and confusing customers by mimicking Complainant’s website, and as such Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <bissellprofr.com>, <bissellpro-es.com>, <bissellpro-it.com>, and <bisselpro-it.com> domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent is competing with Complainant by offering identical or similar products. Under Policy ¶¶ 4(c)(i) and (iii), panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent offers for sale products or services that compete with those of a Complainant. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Respondent purports to sell vacuum cleaners and other cleaning products at (<bissellprofr.com>, <bissellpro-es.com>, <bissellpro-it.com>, and <bisselpro-it.com>). The Panel here finds that Respondent is violating the applicable policy in competing with Complainant as noted, thus Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the above disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Lastly, Complainant notes that numerous disputed domain names resolve to inactive sites. A respondent’s failure to make active use of a domain name does not satisfy Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant provides evidence that <bissellpro-de.com> specifically does not seem to resolve to an active website. The Panel here finds the website inactivity additionally supports the conclusion that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith by deceiving customers through falsely portraying an association with Complainant. Previous Panels have determined that a respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as a complainant evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Passing off has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant”). As noted above, Respondent’s webpages feature the BISSELL mark and display and purport to sell BISSELL products. The Panel here finds that Respondent is passing off as Complainant, in violation of Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is selling either real, unauthorized goods of Complainant or counterfeit goods and competing with Complainant. A respondent’s use of a domain name to sell unauthorized or counterfeit goods may be further evidence of bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”) A respondent’s general use of a domain name to offer for sale competing goods or services may also evince bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). The Panel again notes Respondent purports to sell vacuum cleaners and other cleaning products which constitutes selling unauthorized goods in competition with Complainant and is additional evidence of bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent’s failure to make active use of some of the domain names shows bad faith. Previous Panels have agreed, holding the inactive use of a disputed domain name qualifies as bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). As the Panel here finds some of the disputed domain names are not actively used, it finds additional support to conclude that Respondent engaged in bad faith registration and use according to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bissellpro.com>, <bissellprofr.com>, <bissellpro-us.com>, <bissellpro-es.com>, <bissellpro-it.com>, <bissellpro-de.com>, <bissellpro-uk.com>, <bisellprofr.com>, <bisselpro-es.com>, and <bisselpro-it.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 13, 2023
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