DECISION

 

Baby List, Inc. v. Sara Levy

Claim Number: FA2401002078676

PARTIES

Complainant is Baby List, Inc. ("Complainant"), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Sara Levy ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <hiringbabylist.com> and <hrbabylist.com>, (the "Domain Names") registered with Wild West Domains, LLC.

 

PANEL

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

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 10, 2024; Forum received payment on January 10, 2024.

 

On January 11, 2024, Wild West Domains, LLC confirmed by e-mail to Forum that the <hiringbabylist.com> and <hrbabylist.com> Domain Names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 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@hiringbabylist.com, postmaster@hrbabylist.com. Also on January 12, 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 February 2, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the mark BABYLIST registered, inter alia, in the USA for online retail services related to baby products with first use recorded as 2015.

 

<hiringbabylist.com> registered in 2023 and <hrbabylist.com> registered in 2024 are confusingly similar to the Complainant's trade mark including it in its entirety and only adding the generic term 'hiring' or the abbreviation 'hr' short for Human Resources, and the gTLD .com none of which prevents said confusing similarity.

 

Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.

 

The Domain Names have been used for employment related and/or baby product related pay per click links. <hrbabylist.com> has been used for an employment scam to phish for Internet users' information.  These uses are not a bona fide offering of goods or services or a legitimate noncommercial fair use. This is registration and use in bad faith impersonating the Complainant, deceiving Internet users and disrupting the Complainant's business in full knowledge of the Complainant and its rights for fraudulent reasons.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the mark BABYLIST registered, inter alia, in the USA for online retail services related to baby products with first use recorded as 2015.

 

<hiringbabylist.com> registered in 2023 and <hrbabylist.com> registered in 2024 have been used for employment related and/or baby product related pay per click links. <hrbabylist.com> has been used for an employment scam to phish for Internet users' information.

 

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

The Domain Names consist of the Complainant's BABYLIST mark (which is registered in USA for retail services related to baby products with first use recorded as 2015), the generic term 'hiring' or abbreviation 'hr', and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term or abbreviation to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms 'hiring' or 'hr' to the Complainant's mark does not distinguish either Domain Name from the Complainant's trade mark pursuant to the Policy.

 

The gTLD .com does not serve to distinguish a domain name from a complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names or either of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Names have been used for commercial pay per click links. Use for commercial competing pay per click links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of .. domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

<hrbabylist.com> has also been used for phishing e mails related to an employment scam. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that 'Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use'). 

 

The Respondent has not answered this Complaint or provided any explanation to rebut the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

<hrbabylist.com> has been used in a phishing e mail employment scam. Phishing is evidence of bad faith registration and use per se within the Policy 4(a)(iii). See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015). The reference to the Complainant's business in this employment scam shows the Respondent was aware of the Complainant and its business, rights and services.

 

Both Domain Names have been used for commercial pay per click links. Use of a domain name containing a mark with a reputation for pay per click links indicates bad faith being disruptive of the Complainant's business and diverting customers for commercial gain and can also indicate actual knowledge of the Complainant and its business. Accordingly, the Panel holds, in addition, that the Respondent has intentionally attempted to attract for commercial gain Internet users to her website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products or services offered on it likely to disrupt the business of the Complainant. See Health Republic Insurance Company v Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv) with respect to both Domain Names.

 

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 <hiringbabylist.com> and <hrbabylist.com> Domain Names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: February 2, 2024