BigCommerce Pty Ltd v. John Dow
Claim Number: FA2305002046267
Complainant is BigCommerce Pty Ltd ("Complainant"), Australia, represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, United States. Respondent is John Dow ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigcommerceapi.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 26, 2023; Forum received payment on May 26, 2023.
On May 30, 2023, GoDaddy.com, LLC confirmed by email to Forum that the <bigcommerceapi.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bigcommerceapi.com. Also on June 1, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 June 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 offers a cloud-based ecommerce platform for online sellers, powering business-to-business and business-to-consumer transactions worldwide. Complainant states that it has used the BIGCOMMERCE mark in connection with this platform for more than a decade, and that it has spent nearly $68 million advertising its business under the mark over the past five years. Complainant asserts common law trademark rights in BIGCOMMERCE. Complainant also owns United States trademark registrations for BIGCOMMERCE in standard character form, and for a design mark comprised of the term BIGCOMMERCE with a triangle enclosing the first three letters.
The disputed domain name <bigcommerceapi.com> was registered in March 2022. The name was registered in the name of a privacy registration service prior to the commencement of this proceeding, at which time the privacy shield was lifted and Respondent was revealed to be the registrant. The domain name does not resolve to a website, and Respondent does not appear to have made any active use of the name. Complainant states that Respondent is not commonly known by the domain name and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <bigcommerceapi.com> is confusingly similar to its BIGCOMMERCE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <bigcommerceapi.com> incorporates Complainant's registered BIGCOMMERCE trademark, adding the generic term "API" (application programming interface) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Evernote Corp. v. SuJie (苏杰), D2021-2453 (WIPO Oct. 12, 2021) (finding <evernoteapi.com> confusingly similar to EVERNOTE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to have made any active use of the domain name, nor to have engaged in preparations for such use, suggesting that Respondent lacks rights or legitimate interests in the domain name. See, e.g., McGuireWoods LLP v. Scott Mark, FA 2044900 (Forum June 16, 2023) (finding lack of rights or interests in similar circumstances); Morgan Stanley v. Wenwu Tang, FA 2042145 (Forum May 24, 2023) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service and what the Panel infers to be at least partially fictitious underlying registration data to register a domain name incorporating Complainant's registered mark. Respondent does not appear to have made any active use of the domain name and has not come forward with any explanation for the selection of the domain name or its intended use. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant and its mark, perhaps in support of a fraudulent scheme, and that Respondent is maintaining the domain name for that purpose. See, e.g., McGuireWoods LLP v. Scott Mark, supra (finding lack of rights or interests in similar circumstances); Morgan Stanley v. Wenwu Tang, supra (same); see also Evernote Corp. v. SuJie (苏杰), supra (finding bad faith where domain name appending "API" to trademark redirected users to unrelated gambling website). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigcommerceapi.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 28, 2023
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