Backcountry.com, LLC v. Tfrh Ygfrt
Claim Number: FA2302002030930
Complainant is Backcountry.com, LLC (“Complainant”), represented by Craig A. Beaker of Holland & Hart LLP, USA. Respondent is Tfrh Ygfrt (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebasinrange.com>, registered with Name.com, Inc..
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 Forum electronically on February 7, 2023; Forum received payment on February 7, 2023.
On February 8, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <thebasinrange.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 February 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@thebasinrange.com. Also on February 9, 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 March 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BASIN+ RANGE mark established by its ownership of the portfolio of United States registered trademarks described below and its use of the mark since at least as early as 2015 in connection with the sales of its apparel and accessories.
Complainant alleges that the disputed domain name is identical or at the very least confusingly similar to Complainant’s BASIN + RANGE mark, specifically arguing that the disputed domain name wholly incorporates the terms “basin” and “range” and merely adds the generic term “the”, along with the generic Top-Level Domain (“gTLD”) extension <.com>. Complainant submits that previous panels established under the Policy have found confusing similarity when a respondent merely adds a generic or descriptive term to a complainant's mark. See Bloomberg Fin. L.P. v. Nexperian Holding Ltd., 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.”).
Complainant moreover argues that the addition of the gTLD extension <.com>. is also irrelevant for purposes of ascertaining confusing similarity. See Anheuser-Busch, Inc. v. FIG Vietnam c/o Domain Admin, FA 1190330 (Forum Jun. 25, 2008) (finding the “addition of a generic top-level domain such as ‘.com’ is irrelevant when determining if the disputed domain name is confusingly similar to [the complainant’s] mark”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name. Referring to the WHOIS information for the disputed domain name, which is in the record, Complainant argues that there is also no evidence that Respondent was commonly known by the disputed domain name prior to its registration. Citing Chevron Intellectual Prop. LLC v. Fred Wallace, FA 1626022 (Forum Jul. 27, 2015) (finding that respondent was not commonly known by the <chevron-europe.com> domain name, as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant adds that Respondent is not affiliated with Complainant in any way. Complainant asserts that it has not given Respondent permission to use the BASIN + RANGE mark, and submits that this lack of consent supports a finding that Respondent has no legitimate interests in the disputed domain name. See 7-Eleven, Inc. v. Metodi Darzev / Tool Domains Ltd, FA 1910817 (Forum Oct. 1, 2020) (“In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name.”).
Complainant next refers to screen captures of the website to which the disputed domain name resolves, and screen captures of Complainant’s own website at <www.backcountry.com> which are exhibited in an annex to the Complaint.
Complainant submits that the images on Respondent’s website as shown in the screen captures illustrate that Respondent is using the disputed domain name to pass itself off as Complainant by using Complainant’s BASIN + RANGE mark as well as images and content from Complainant’s website. Complainant submits that such use of the disputed domain name by Respondent to pass itself off as Complainant in order to sell competing goods is not a use indicative of rights nor does it establish legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant further submits that previous panels established under the Policy have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possessed trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of ≪providencejournal.com≫ demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant next submits that the disputed domain name was registered and is being used in bad faith, arguing that, as reflected by the first use dates in Complainant’s trademark registrations, Complainant contends that it first began using and developing rights in the BASIN + RANGE mark in the United States since at least as early as 2015, well before Respondent’s registration of the disputed domain name. Complainant submits that Respondent’s use of the disputed domain name and copying of Complainant’s website, product listings, and registered mark indicate that Respondent was not only aware of Complainant’s strong trademark rights, but that Respondent attempted to benefit from Complainant’s goodwill associated with the BASIN + RANGE mark.
Complainant asserts that is not a coincidence that Respondent registered the disputed domain name which is confusingly similar to Complainant’s well-known BASIN + RANGE mark and then created a website that incorporates Complainant’s registered mark and purports to sell Complainant’s own BASIN + RANGE-branded products.
Complainant submits that Respondent’s actions indicate that it knew of Complainant’s rights and intended to pass itself off as Complainant in an effort to confuse consumers, which constitutes bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”);
Complainant adds that Respondent’s selection of the disputed domain name was calculated to maximize a likelihood of confusion with the BASIN + RANGE mark intending to confuse Complainant’s customers into navigating to a website associated with the disputed domain name.
Moreover, Complainant argues that given the international promotion and success of Complainant’s BASIN + RANGE mark, Respondent’s use of the disputed domain name is likely to cause confusion. See AT&T Corp. v. Alamuddin, WIPO Case D2000-0249 (when a trademark is well-known internationally, there is a high likelihood that a domain name incorporating the trademark will create confusion).
Complainant contends that Respondent is using the disputed domain name and associated website to pass itself off as Complainant. In particular, Complainant submits that the screen capture of Respondent’s website shows that it prominently features the term “THEBASINRANGE”, which is nearly identical to Complainant’s registered BASIN + RANGE mark.
Moreover, Complainant adds that Respondent’s website associated with the disputed domain name copies Complainant’s content, images, and product listings, and argues that it is well established that use of a domain name to pass oneself off as the complainant constitutes bad faith. See Kohler Co. v. jinnan ye / beijing celijie keji youxiangongsi, FA 1679954 (Forum Aug. 5, 2016) (finding bad faith where respondent’s website displayed complainant’s trademarks and copyrighted images of complainant’s products without authorization, in an attempt to pass itself off as complainant).
Furthermore Complainant submits that a respondent’s use of a domain name to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant similarly constitutes bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a retailer of apparel and accessories, and is the owner of the following United States registered trademarks:
· United States BASIN + RANGE, registration number 4,974,728, registered on the Principal Register on June 7, 2016 for goods in international class 25;
· United States BASIN + RANGE, registration number 6,890,346, registered on the Principal Register on November 1, 2022, pursuant to an application filed on December 15, 2020, for goods in international class 25.
Complainant has an established Internet presence and markets its products bearing the BASIN+RANGE mark on its website at www.backcountry.com
The disputed domain name <thebasinrange.com> was registered on April 6, 2022, and resolves to an active website that copies Complainant’s product listings on its website at <www.backcountry.com>.
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 Forum for details of the registration of the disputed domain name.
The Registrar confirmed that the disputed domain name was registered in the name of Respondent, who had availed of a privacy service to conceal its identity on the published WhoIs
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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the BASIN+RANGE mark, established by the ownership of the United States trademark registrations described above and use of the mark in its apparel and accessories business.
Confusing Similarity
The disputed domain name <thebasinrange.com> consists of the two primary elements found in Complainant’s BASIN+RANGE mark, namely the words “basin” and “range”, in combination with the definite article and followed by the generic Top-Level Domain extension <.com>
The disputed domain name is almost identical to Complainant’s mark. `The only element in Complainant’s mark that is not present in the disputed domain name is the conjunctive plus sign (“+”),
Complainant’s mark is clearly referenced within the disputed domain name. The absence of the conjunctive plus sign (“+”), which is not a permitted character in a domain name does not prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the BASIN+RANGE in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent was commonly known by the disputed domain name prior to its registration;
· Respondent is not affiliated with Complainant in any way;
· Complainant has not given Respondent permission to use the BASIN + RANGE mark;
· the screen captures of the website to which the disputed domain name resolves and Complainant’s website at <www.backcountry.com>, which are exhibited in an annex to the Complaint, illustrate that Respondent is using the disputed domain name to pass itself off as Complainant by using Complainant’s BASIN + RANGE mark as well as images and content taken from Complainant’s website;
· previous panels established under the Policy have held that there can be no rights or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possessed trademark rights in a mark identical or similar to the domain name at issue as in this proceeding.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore 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).
Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the BASIN + RANGE mark which predate the registration and first use of the disputed domain name on April 6, 2022.
Complainant’s abovementioned United States registration number 4,974,728 was registered on June 7, 2016 and while its United States trade mark registration number 6,890,346, was more recently registered on November 1, 2022, the registration was made pursuant to an application filed on December 15, 2020.
The combination of the elements “basin” and “range” create a distinctive trademark and this Panel finds that it is improbable that the registrant of the disputed domain name was unaware of Complainant’s mark when the disputed domain name was chosen and registered.
This Panel finds that on the balance of probabilities the disputed domain name was in fact chosen and registered in bad faith, with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s reputation and goodwill in the BASIN+RANGE mark.
The uncontested evidence adduced by Complainant shows that the disputed domain name has been used to resolve to a website which purports to offer for sale apparel and accessories identical to those offered by Complainant and marketed under the BASIN+RANGE mark.
Furthermore, the exhibited screen captures of Complainant’s website at <www.backcountry.com> and the website to which the disputed domain name resolves show that Respondent is purporting to impersonate Complainant on its website.
There is no attempt to signal that Respondent’s website is not owned or related to Complainant. Respondent’s website prominently displays the combined words “THEBASINRANGE” at the head of its landing page. This certainly does not distinguish Respondent’s website from Complainant’s website but in fact is likely to add to the confusion experienced by confused and misdirected, unsuspecting Internet users arriving at Respondent’s website.
Such use of the disputed domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <thebasinrange.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________________________
James Bridgeman SC
Panelist
Dated: March 8, 2023
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