West Coast Parts Distributing d/b/a Box Appliance v. Daniil Kliuiev
Claim Number: FA2303002038005
Complainant is West Coast Parts Distributing d/b/a Box Appliance (“Complainant”), represented by Carolyn Juarez of Neugeboren O’Dowd PC, Colorado, USA. Respondent is Daniil Kliuiev (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <realboxappliance.com>, registered with Google 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 29, 2023; Forum received payment on March 29, 2023.
On March 30, 2023, Google LLC confirmed by e-mail to Forum that the <realboxappliance.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 April 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@realboxappliance.com. Also on April 4, 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 May 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is in the appliance installation maintenance and repair business. Complainant asserts rights in the BOX APPLIANCE mark based upon its registration in the United States in 2021.
Complainant alleges that the disputed domain name is confusingly similar to its BOX APPLIANCE trademark because it incorporates the mark in its entirety and merely adds the generic term “real” and the generic top-level domain name (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed. Respondent is not licensed or authorized to use Complainant’s BOX APPLIANCE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the resolving website displays Complainant’s mark and purportedly offers competing Sub-Zero brand appliance repair services. Respondent’s use of the BOX APPLIANCE mark creates an impression of a sponsorship or affiliation between Respondent and Complainant that does not in fact exist. Moreover, Respondent appears to use the resolving website to exploit the suggested association or affiliation with Complainant in an effort to obtain consumers’ personal and payment information. Complainant is aware of incidents where consumers mistakenly contact Respondent rather than Complainant when looking for Complainant; Respondent’s answering service represents that Respondent is Complainant and schedules appliance repair services. Respondent’s service technicians have failed to appear at the appointed time, have taken deposits from customers for parts that Respondent’s service technicians never return with, and have represented to customers that their services are associated with Complainant.
Complainant believes that Respondent is or is affiliated or associated with Henry Wasserman, a serial registrant of infringing domain names through which they purport to offer appliance services in cities across the United States. The physical address listed on the resolving website is the same as the physical address listed on a trademark application for HENRY’S LIST owned by Mr. Wasserman. The email address for Respondent as provided by the Registrar is “support@henryslist.com”. As a result of his conduct, in 2019, Mr. Wasserman entered into a consent injunction through which he is prohibited from using the Sub-Zero and Wolf word and design marks on any website. Thus, according to Complainant, the disputed domain name is used for an illegal activity.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The disputed domain name is being used to impersonate Complainant, offer appliance repair services purporting to be those of Complainant, and intercept business intended for Complainant. It may be used to conduct phishing activities by receiving customers’ personal and payment information. Respondent had actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark BOX APPLIANCE and uses it to provide appliance repair services.
Complainant’s rights in its mark date back to at least 2021.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and offers services that compete with those of Complainant. When called by customers, Respondent purports to be affiliated with Complainant.
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”).
The disputed domain name incorporates Complainant’s BOX APPLIANCE mark in its entirety and merely adds the generic term “real” and the generic top-level domain name (“gTLD”) “.com”. The addition of a generic term and gTLD is not sufficient to distinguish a disputed domain name from a 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).”). Therefore the Panel finds that the <realboxappliance.com> domain name is confusingly similar to Complainant’s BOX APPLIANCE mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s BOX APPLIANCE mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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)). Here, the WHOIS information for the disputed domain name lists the registrant as “Daniil Kliuiev”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is or is affiliated or associated with Henry Wasserman, a serial registrant of infringing domain names through which they purport to offer appliance services in cities across the United States, and that the disputed domain name is being used illegally by Mr Wasserman. Since, as shown below, other elements are dispositive for the instant case, the Panel will not further discuss this allegation.
Complainant alleges that the resolving website is used to phish for user’s personal and financial information, but does not present any evidence to support that allegation, see below. Thus the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and will not further discuss it.
Complainant alleges that it is aware of incidents where consumers mistakenly contact Respondent rather than Complainant when looking for Complainant; Respondent’s answering service represents that Respondent is Complainant and schedules appliance repair services. Respondent’s service technicians have failed to appear at the appointed time, have taken deposits from customers for parts that Respondent’s service technicians never return with, and have represented to customers that their services are associated with Complainant.
However the evidence presented by Complainant does not support all of those allegations. What the evidence shows is that, when a user calls the number displayed on the resolving website, they are told that a service technician will call to repair their appliance and that the invoice will come from a company affiliated with Complainant. In the situation for which Complainant provided evidence, the appliance was repaired and an invoice from a company other than Complainant was issued and paid.
Thus the evidence shows that the resolving website is used to offer services that compete with those of Complainant. Previous Panels have found that use of a disputed domain name to offer goods or services in competition with those of a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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.”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers services that compete with those of Complainant. Panels have held that registration and use of a disputed domain name to divert Internet traffic to a competing website offering the same or similar goods or services demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and, when called by customers, Respondent purports to be affiliated with Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <realboxappliance.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 1, 2023
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