Bath Authority LLC v. Guomin Hu
Claim Number: FA2303002037744
Complainant is Bath Authority LLC (“Complainant”), represented by Timothy L. Capria of Bradley Arant Boult Cummings LLP, US. Respondent is Guomin Hu (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outletdreamline.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on March 28, 2023; Forum received payment on March 28, 2023.
On March 30, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <outletdreamline.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 March 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@outletdreamline.com. Also on March 31, 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 April 27, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Bath Authority LLC, uses the trademark DREAMLINE in relation to bathtubs, bathtub enclosures, showers, shower sprayers, shower bases, shower doors, shower enclosures, shower panels, among other products. Complainant asserts rights to the DREAMLINE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,696,081, registered on March 3, 2015). Respondent’s <outletdreamline.com> domain name, registered on October 13, 2022, is confusingly similar to Complainant’s mark as it contains the DREAMLINE mark in its entirety, merely adding the generic term “outlet” and the generic top-level domain “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <outletdreamline.com> domain name. Respondent is not licensed or authorized to use Complainant’s DREAMLINE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent copies many elements of Complainant’s own website and uses the disputed domain name to pass itself off as Complainant with the intent of diverting internet users.
Respondent registered and uses the <outletdreamline.com> domain name in bad faith. It disrupts Complainant’s business by purporting to offer products that compete with Complainant and it uses the disputed domain name to attract internet users for commercial gain by passing itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights in the DREAMLINE trademark as evidenced by its USPTO registration certificate and the <outletdreamline.com> domain name is confusingly similar to the mark;
- Based on copying of certain elements of Complainant’s own website for passing off, as well as Respondent’s identity as shown in the WHOIS record, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted; and
- Respondent’s registration and use of the disputed domain name is in bad faith. The disputed domain name is used for a site that copies certain elements of Complainant’s own website and purports to offer for sale goods that are competitive to those offered by Complainant offers based on confusion with the DREAMLINE mark.
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 DREAMLINE mark based upon registration with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of 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 demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Here, the Complainant has provided a copy of its USPTO trademark registration certificate. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <outletdreamline.com> domain name is confusingly similar to the DREAMLINE mark as it contains the mark in its entirety, merely adding the generic term “outlet” and the “.com” gTLD to form the disputed domain name. The addition of a generic term and a gTLD typically does not sufficiently differentiate a domain name from an asserted mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) As Complainant’s mark is clearly recognizable in the <outletdreamline.com> domain name, despite the addition of the word “outlet” and the “.com” gTLD, the Panel finds that the disputed domain name is confusingly similar to the DREAMLINE mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <outletdreamline.com> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the DREAMLINE mark. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by 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 complainant’s mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name, as revealed by the concerned Registrar after the filing of the Complaint, lists the registrant as “Guomin Hu” and there is no evidence of record to suggest that Respondent is known otherwise or that it was authorized to use the DREAMLINE mark. The mere fact that Complainant’s mark and logo appear on Respondent’s website does not, itself, indicate that Respondent is commonly known thereby. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Therefore, the Panel finds no evidence upon which to base a conclusion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <outletdreamline.com> domain name in connection with a bona fide offering of goods or services and fails to make a legitimate noncommercial or fair use thereof because it is passing itself off as Complainant. It provides evidence that Respondent uses the disputed domain name to misleadingly divert consumers away from Complainant’s website to Respondent’s own website which displays content belonging to Complainant. Complainant argues that Respondent does this for Respondent’s financial gain. Using a confusingly similar domain name to divert internet users to a respondent’s website which features improperly reproduced content for a respondent’s financial gain and the purpose of passing off may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant provides a screenshot of Respondent’s website that resolves from the disputed domain name, and notes that it displays a copy of the DREAMLINE logo and tagline “The Ultimate Shower Door” in the top left-hand corner of the page and a large center photo of a white bathtub and a tan tiled shower that appears to have been copied from Complainant’s own website at its <dreamline.com> domain name. As the Panel finds Complainant’s evidence and arguments credible and as Respondent has not filed a response or made any other submission in this case to rebut the aforementioned prima facie case, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses <outletdreamline.com> domain name in bad faith as Respondent intentionally chose the domain name because it is confusingly similar to the DREAMLINE mark. A respondent’s use of a well-known mark can demonstrate actual knowledge of a complainant’s rights therein at registration and form the basis upon which to build a case for bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant asserts that it first used the DREAMLINE Mark as early as 2006 and that it has “has invested substantial effort and expense to develop goodwill in the Mark and as a result, Complainant’s Mark has become associated with Complainant and operates in the minds of consumers as a reliable indicator of the source of the goods offered under the Mark.” However, the Complainant submits no evidence to support this apart from its trademark registration certificate and a current screenshot of its own website. While evidencing trademark rights, this evidence does not speak to the reputation, history, or scope of the mark. Nevertheless, the Panel finds it highly likely that Respondent had prior knowledge of the asserted DREAMLINE mark based on the direct copying of Complainant’s logo, tagline, and a photo from its website. From the evidence showing a high degree of similarity between the content of Respondent’s and Complainant’s respective websites, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DREAMLINE mark.
Next, Complainant asserts that Respondent registered and uses the <outletdreamline.com> domain name for the primary purpose of disrupting Complainant’s business.by purportedly offering products that compete with Complainant. The use of a disputed domain name to maintain a website that competes with the complainant’s is most often viewed as evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) Here, Complainant points to Respondent’s copying of certain elements of its own website including its logo, tagline, and certain photography and the Panel notes that Respondent’s site appears to offer bathtubs, surrounds, and plumbing fixtures for sale, all in competition with Complainant. Respondent has not participated in these proceedings and so it does not contest Complainant’s evidence or assertions. Thus, by a preponderance of the evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith to disrupts Complainant’s competing business pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant contends that Respondent registered and uses the <outletdreamline.com> domain name to attract internet users for commercial gain by passing itself off as Complainant based on confusion with the DREAMLINE mark. The registration and use of a disputed domain name in an attempt to pass oneself off as a complainant supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also Russell & Bromley Limited v. Li Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). As support, Complainant points to screenshots of Respondent’s website and its own <dreamline.com> site showing reproduction of its mark, tag line “The Ultimate Shower Door”, and a large center photo of a white bathtub, as well as, the offering of bath and shower products that are in the identical category as those offered by Complainant. In light of this uncontested evidence, the Panel agrees with Complainant’s assertions and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outletdreamline.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 28, 2023
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