DECISION

 

Bass Pro Intellectual Property, L.L.C. v. Domain Administrator / Sugarcane Internet Nigeria Limited

Claim Number: FA2401002078150

 

PARTIES

Complainant is Bass Pro Intellectual Property, L.L.C. ("Complainant"), represented by Michael G. Nunnally of King & Spalding LLP, Texas, USA. Respondent is Domain Administrator / Sugarcane Internet Nigeria Limited ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rewardbasspro.com>, registered with Porkbun LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 8, 2024, Porkbun LLC confirmed by e-mail to Forum that the <rewardbasspro.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 January 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2024 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@rewardbasspro.com. Also on January 10, 2024, 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 January 31, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant and its affiliates is premier sports equipment and outdoor recreation retailer with destination outdoor retail stores across the United States and Canada, serving over 200 million customers per year. The distinctive and well-known trademarks BASS PRO SHOPS and BASS PRO have been in use since at least 1972 in connection with its sports equipment and outdoor recreation retail store services and related goods and services. Today, Complainant operates over 170 retail store locations in the United States and Canada, and has over 40,000 employees and approximately $8 billion in annual revenue. Complainant also owns numerous international trademark registrations, including in South America, Asia and Europe. In addition, Complainant has, since 1995, registered and uses the domain name <basspro.com> in connection with the advertising and sale of its products and services on the Internet.

 

The <rewardbasspro.com> domain name is confusingly similar to the BASS PRO trademarks, as it incorporates Complainant's BASS PRO trademark in its entirety, merely adding the descriptive word "reward" and the ".com" generic top-level domain ("gTLD"). Adding "reward" before "Bass Pro" merely adds to the confusion because it may mislead consumers into believe the resolving website pertains specifically to the Outdoor Rewards loyalty rewards program provided by Complainant.

 

Respondent has no rights or legitimate interests in the domain name. Respondent has no relationship with Complainant and is not commonly known by <rewardbasspro.com>. Respondent has not used the domain name in good faith and in connection with a bona fide offering of services. The <rewardbasspro.com> domain name appears to direct to a parked webpage with "rewardbasspro.com" at the top of the page. Respondent's use is not a legitimate use under the Policy. Further, in light of the longstanding and widespread notoriety of the BASS PRO trademarks, Respondent's use of the domain name cannot be bona fide under any circumstance.

 

Respondent registered and used the domain name in bad faith. It is clear that Respondent registered the subject domain name with the BASS PRO trademarks in mind in light of the fame of the BASS PRO trademarks and deliberate attempt to mislead the Complainant's customers. Respondent's registration and infringing use of the <rewardbasspro.com> domain name, despite having such knowledge, indicates bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 1,116,517 BASS PRO SHOPS (word), registered April 10, 1979 for services in Intl Class 42;

No. 2,192,947 BASS PRO (word), registered October 6, 1998 for goods in Intl Class 28;

No. 2,191,778 BASS PRO SHOPS (fig), registered September 29, 1998 for goods in Intl Class 16;

No. 2,193,039 BASS PRO SHOPS (fig), registered October 6, 1998 for services in Intl Class 35;

No. 2,081,740 BASS PRO SHOPS (fig), registered July 22, 1997 for goods in Intl Class 25;

No. 3,296,836 BASS PRO SHOPS (word), registered September 25, 2007 for goods in Intl Class 9;

No. 3,754,134 BASS PRO SHOPS (word), registered March 2, 2010 for goods in Intl Class 9; and

No. 5,076,199 BASS PRO SHOPS (word), registered November 8, 2026 for services in Intl Classes 35, 41, 43, 44 and 45.

 

The disputed domain name <rewardbasspro.com> was registered on November 9, 2023.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the BASS PRO trademark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the BASS PRO trademark (e.g., Reg. No. 2,192,947, registered October 6, 1998). Therefore, the Panel find that Complainant has rights in the BASS PRO trademark under Policy ¶ 4(a)(i).

 

The Complainant argues that Respondent's <rewardbasspro.com> domain name is confusingly similar to Complainant's trademark because Respondent has incorporated the entire trademark and added a generic word and the ".com" gTLD. Domain names which incorporate the entire trademark are usually considered confusingly similar and adding a gTLD creates no distinction between a complainant's trademark and a disputed domain. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In addition, adding a generic phrase does not make the disputed domain name sufficiently distinct per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD.").

 

Here, the Panel notes that the added the generic word "rewards" can be seen as referring directly to Complainant's Outdoor Rewards loyalty rewards program. Therefore, the Panel find that Respondent's domain name is confusingly similar to Complainant's trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Complainant claims that Respondent does not have rights or legitimate interests in the <rewardbasspro.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant's BASS PRO trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ (c)(ii). See Guardair Corporation v Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ (c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant's trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <rewardbasspro.com> and no information suggests that Complainant authorized Respondent to use the BASS PRO trademark. Rather, the fact that the WHOIS information notes that the registrant's name is written as some kind of general domain administrator demonstrates that Respondent is not publically known by the BASS PRO trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the <rewardbasspro.com>   domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to a parked webpage with <rewardbasspro.com> at the top and some links referring to different types of "rewards". Such use is not considered as legitimate use under the Policy.  See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA 1620342 (Forum July 1, 2015) ("Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively."). Therefore, the Panel concludes that the Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name in bad faith, a conclusion based on the fact that the trademark BASS PRO is well-known and distinctive.

 

The Panel agrees with that conclusion. As noted above, the BASS PRO trademark is well-known, registered long before the disputed domain name, and the added generic word "rewards" clearly relates to an activity provided by the Complainant. Further, the links on the web site connected with the disputed domain name can be seen as referring to other companies providing similar services. See Bass Pro Product Authority, LLC v. Stephen Sands, FA 1918929 (Forum Nov. 27, 2020) ("In the present case, Complainant's trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy). See also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).").

 

Therefore, the Panel agrees and find that Respondent had actual knowledge of Complainant's rights in the BASS PRO trademark, and the Panel therefore also find bad faith per Policy 4 ¶ (a)(iii).

 

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 <rewardbasspro.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Petter Rindforth, Panelist

Dated: February 14, 2024