DECISION

 

Bernhardt Furniture Company v. Shumin Nie / Jiarong Huo / Jiang Qiqi / ZhangQiaoqiao

Claim Number: FA2311002072422

 

PARTIES

Complainant is Bernhardt Furniture Company ("Complainant"), represented by Stephen Shaw of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Shumin Nie / Jiarong Huo / Jiang Qiqi / ZhangQiaoqiao ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <bernhardtshop.com>, <furniturebernhardt.com>, <newbernhardt.com>, <homebernhardt.com> and <furniture-bernhardt.com>, registered with Name.com, Inc. and OwnRegistrar, Inc..

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 27, 2023; Forum received payment on November 27, 2023.

 

On November 28, 2023, Name.com, Inc. and OwnRegistrar, Inc. confirmed by e-mail to Forum that the <bernhardtshop.com>, <furniturebernhardt.com>, <newbernhardt.com>, <homebernhardt.com> and <furniture-bernhardt.com> domain names are registered with Name.com, Inc. and OwnRegistrar, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. and OwnRegistrar, Inc. have verified that Respondent is bound by the Name.com, Inc. and OwnRegistrar, Inc. registration agreements 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 November 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@bernhardtshop.com, postmaster@furniturebernhardt.com, postmaster@newbernhardt.com, postmaster@homebernhardt.com and postmaster@furniture-bernhardt.com. Also on November 30, 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 December 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

There are five domain names in dispute but the Registrar disclosed the names of four different domain name holders. Paragraph 3(c) of 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."  

 

The Panel has a residual discretion to allow this one action against all of the domain names if it can reasonably be inferred that the domain names are effectively controlled by one person or entity, which is operating under several aliases.  Complainant's submission is that "[u]pon information and belief, all five domain names in dispute have the same Registrant or, in the alternative, a group of Registrants taking part in a single conspiracy."  This statement is incorrect insofar as it claims there is one registrant, and does not satisfy Rule 3(c) insofar as it refers to a group acting together.

 

The evidence must infer a single person or entity controlling all five domain names.  The evidence shows that (i) the user interfaces of the five websites are substantially similar; (ii) the Privacy Policy is the same on each site; (iii) the Terms and Conditions of the websites are virtually identical; and (iv) four of the five domains use the same Registrar.

 

The Panel finds sufficient evidence that the domain names are controlled and used by a single person or entity having no connection with the real persons named as the holders. In these circumstances the Panel determines under Rule 3 that these proceedings can continue in respect of all five disputed domain names. Accordingly, references herein to them are simply as "Respondent".

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in BERNHARDT. Complainant holds a national registration for that trademark.  Complainant submits that the domain names are confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by the same names; and the domain names have been used in competition with Complainant's interests.

 

Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant's trademark and business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant makes and sells furniture and furnishings by reference to the trademark, BERNHARDT;

2.       Complainant is the owner of United States Patent & Trademark Office ("USPTO") Reg. No. 956,911, registered April 10, 1973, for the trademark, BERNHARDT;

3.       the disputed domain names were registered between January and September of 2023; and

4.       the disputed domain names resolve to websites using the trademark, promoting the sale of the same goods sold by Complainant.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.   

 

For the purposes of comparison, the gTLD, ".com", can be disregarded in each case. So, too, the addition to the trademark of descriptive terms is of no distinguishing value. In each case the trademark remains the recognizable part of the domain name and the Panel finds that the disputed domain names are all confusingly similar to Complainant's trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018): "Where a relevant trademark is recognisable 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.").

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The names of the underlying domain name registrants disclosed by the Registrar in consequence of these proceedings do nothing to indicate that Respondent might be commonly known by the domain names (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply.").

 

There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  Further, the use of the domain name is clearly in bad faith and cannot give rise to any rights or legitimate interests. In particular, no rights or legitimate interests can accrue by reason of use of the domain name to resolve to a website offering competitive goods. Indeed, the evidence shows the reproduction of imagery from Complainant's website and generally mimicry of that official site  (see, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."; Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010): "The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").

 

A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's use of the domain names falls squarely under paragraph 4(a)(iv) above. The domain names have already been found to be confusingly similar to the trademark. The resolving websites existed for commercial gain. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of those websites.

 

Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bernhardtshop.com>, <furniturebernhardt.com>, <newbernhardt.com>, <homebernhardt.com> and <furniture-bernhardt.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  December 22, 2023