DECISION

 

Ultra PRO International LLC v. Maury Eric

Claim Number: FA2401002079338

 

PARTIES

Complainant is Ultra PRO International LLC ("Complainant"), represented by Amanda Westfall of Keener & Associates, P.C., Illinois, USA. Respondent is Maury Eric ("Respondent"), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ultrapro-store.com> ('the Domain Name'), registered with Gname.com Pte. Ltd.

 

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 16, 2024; Forum received payment on January 16, 2024.

 

On January 17, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <ultrapro-store.com> Domain Name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@ultrapro-store.com. Also on January 18, 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 8, 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 docum s ents 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

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark ULTRA PRO, registered, inter alia, in the USA for desktop mats for use in card games with first use recorded as 1998.

 

The Domain Name registered in 2023 is confusingly similar to the Complainant's mark, wholly incorporating it and adding only a hyphen, the generic term 'store' and the gTLD .com none of which prevents the said confusing similarity.

 

Respondent has no permission from the Complainant to use the Complainant's mark and has no rights in the Domain Name. The Domain Name has been used for a web site impersonating the Complainant using the Complainant's mark and logo as a masthead, copying material from the Complainant's web site without permission, purporting to offer the Complainant's goods to confuse customers into thinking the Respondent's site is an official site of the Complainant. This cannot be a bona fide offering of goods and services or a non commercial legitimate fair use. The Respondent has no rights or legitimate interests in the Domain Name.

 

The Respondent registered the Domain Name to direct it to a site that uses the Complainant mark and logo as a masthead to confuse Internet users into believing the web site and Domain Name are associated with the Complainant for commercial gain and disrupting the Complainant's business. The use of the Complainant's logo shows the Respondent is aware of the Complainant and its rights, business and services. The Domain Name has been registered and used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark ULTRA PRO, registered, inter alia, in the USA for desktop mats for use in card games with first use recorded as 1998.

 

The Domain Name registered in 2023 has been used for a web site impersonating the Complainant using the Complainant's mark and logo as a masthead, copying material from the Complainant's web site without permission and purporting to offering the Complainant's goods.

 

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 Name consists of the Complainant's ULTRA PRO mark (registered in the USA for desktop mats for use in card games with first use recorded as 1998), a hyphen, the generic term 'store' and the gTLD .com which do not prevent confusing similarity between the Domain Name and the Complainant's mark.

 

Adding a hyphen does not distinguish a domain name from the Complainant's mark. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 2003) ("The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).").

 

Previous panels have found confusing similarity when a respondent merely adds a generic term 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 term 'store' to the Complainant's mark does not distinguish the 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 Name is 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 Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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 use is commercial so cannot be non commercial legitimate fair use.

 

The web site attached to the Domain Name uses the Complainant's mark and logo as a masthead and copies material from the Complainant's web site so that the Respondent's site appeared to be an official site of the Complainant. The Panel finds the Respondent's use of the Domain Name is confusing and passing off. As such it cannot amount to the bona fide offering of goods and services.  See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).")

 

The Respondent has not answered this Complaint and has not rebutted the prima face 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 Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Name in relation to the Respondent's site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant's mark and logo as a masthead and material copied from the Complainant's web site so as to appear to be an official site of the Complainant.The fact that the Complainant's logo has been copied shows that the Respondent is aware of the Complainant and its services, business and rights.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).

 

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 <ultrapro-store.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: February 8, 2024