DECISION

 

Bernhardt Furniture Company v. Jiajun Peng

Claim Number: FA2403002088371

 

PARTIES

Complainant is Bernhardt Furniture Company ("Complainant"), represented by Jacob S. Wharton of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Jiajun Peng ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bernhardthome.com>, registered with Name.com, 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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 14, 2024; Forum received payment on March 14, 2024.

 

On March 14, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <bernhardthome.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 March 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@bernhardthome.com.

 

Also on March 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 April 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the BERNHARDT mark and other marks that incorporate the BERNHARDT mark as the principal element, and extensive use of the mark since 1965 in the manufacture and sale of furniture and providing related services, through its ownership of the portfolio of trademark and service mark registrations described below.

 

Complainant submits that it markets its goods and services through Complainant's retail outlet in Granite Falls, North Carolina, and numerous third-party retailers as well as online through its website at <www.bernhardt.com>.

 

It is alleged by Complainant that the disputed domain name <bernhardthome.com> is identical or confusingly similar to its BERNHARDT mark as it contains the mark in its entirety. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case D2003-0888 ("In numerous cases, it has been held that a domain name that wholly incorporates a Complainants [sic] registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.").

 

Complainant submits that the addition of the descriptive and non-distinctive term "home" in the disputed domain name, cannot avoid a finding of confusing similarity with Complainant's mark, because it is well settled that a user of a mark may not avoid a likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA 1059665 (Forum Oct. 2, 2007)  ("addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark").

 

Complainant adds that it is also well settled that the generic Top Level Domain ("gTLD") extension <.com> in the disputed domain name should be disregarded for purposes of assessing confusing similarity under Policy ¶ 4(a)(i). See Citigroup Inc. v. Quan Wen Jun, FA 1742937 (Forum Aug. 28, 2017) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.").

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that

·       Complainant is the exclusive owner of the well-known BERNHARDT mark in connection with furniture;

·       Complainant has never consented to Respondent's use of the disputed domain name;

·       Respondent is not licensed to use Complainant's mark;

·       Respondent's website is in no way authorized or affiliated with Complainant;

·       Respondent is not a subsidiary, affiliate, licensee of Complainant, nor is it controlled by Complainant, nor is it an agent of Complainant;

·       Respondent has no legitimate reason for using Complainant's mark in the disputed domain name other than to mislead the public, trade on Complainant's rights, and to defraud Complainant's customers, citing e.g., H-D Michigan v. Registrant, FA 1109413 (Forum Dec. 27, 2007) (finding respondent had no rights or legitimate interests under Section 4(c)(ii) because the WHOIS information does not indicate respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark).

 

Furthermore, referring to a screen capture of the website to which the disputed domain name resolves, and a screen capture of Complainant's own website, which are exhibited in an annex to the Complaint, Complainant submits that a comparison of the exhibited screen captures shows that the disputed domain name is being used by Respondent in its website addess to promote Complainant's own goods, under Complainant's marks, and using Complainant's own copyrighted images, product names, collection names, and product specifications taken from Complainant's website.

 

Complainant argues that this is an obvious attempt by Respondent to create the impression that its website is affiliated with, or authorized or endorsed by, or otherwise associated with Complainant, when no such connection exists.

 

Respondent is not making a bona fide offering of goods or services. See, BBY Solutions, Inc. v. enlai zhou, FA 1405486 (Forum Oct. 10, 2011) ("The disputed domain name resolves to a copycat website which tries to pass itself off as Complainant, purporting to offer Complainant's services and featuring Complainant's marks. This does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.").

 

Complainant next alleges that the disputed domain name has been registered and is being used in bad faith, arguing that through its longstanding, prominent, and exclusive use of BERNHARDT and BERNHARDT-formative marks in connection with furniture goods and related services, Complainant's marks have come to be well known and exclusively associated with Complainant, and Complainant has acquired an eminent reputation therein.

 

Moreover, Respondent plainly had actual notice of Complainant's rights in and to Complainant's marks when the disputed domain name was first registered and used, so it is simply implausible that Respondent could have unknowingly adopted Complainant's exact BERNHARDT mark for use in the disputed domain name when Respondent has also misappropriated Complainant's marks, including its logo and stylization, copyrighted images from Complainant's website, product and collection names, and more, to promote Complainant's goods on the fraudulent website.

 

It is furthermore contended that there is no good faith basis under which Respondent could reasonably adopt the entirety of Complainant's BERNHARDT mark in the disputed to promote goods that are identical to those sold by Complainant. See, e.g., Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) ("It would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights.").

 

Complainant adds that the exhibited screen captures show that Respondent is disrupting Complainant's business by attempting to defraud Internet users by attracting them to Respondent's fraudulent website at <www.bernhardthome.com> for commercial gain; and contends that by the infringing use of copyrighted materials and other intellectual property rights in the sale of counterfeit products on Respondent's website constitutes bad faith.

 

Finally, Complainant submits that Respondent hid its identity behind a privacy shield and provided false contact information to the Registrar: the address information provided does not appear to exist according to recent Internet searches, and the phone number uses the region code for Hong Kong, China (+852). The same falsified address and phone number, and an email address from the same domain (@dmailksalevip.com) has been used in connection with prior bad faith registrations of domain names under the BERNHARDT trademark. In proceeding Bernhardt Furniture Company v. Shumin Nie et al., FA 2072422 (Forum Dec. 22, 2023) the same falsified address, phone number, and email domain was used by the registrant of <bernhardtshop.com> and <homebernhardt.com>.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant manufactures and markets furniture using the BERHARDT mark for which it holds a portfolio of trademark and service mark registrations including:

·       United States registered trademark BERNHARDT, registration number 956911, registered on the Principal Register on April 10, 1973  for goods in international class 20:

·       United States registered service mark BERNHARDT, registration number 1,801,227, registered on the Principal Register on October 26, 1993 for goods in international class 42.

 

Complainant has an established Internet presence and has owned the domain name <bernhardt.com> which it uses as the address of its website since 1995.

 

The disputed domain name <bernhardthome.com> was registered on August 24, 2023 and resolves to a website that copies Complainant's own website.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name in the course of this proceeding.

 

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 has provided uncontested convincing evidence of its rights in the BERNHARDT mark established by its ownership of its portfolio of trademark and service mark registrations described above; and that since 1965, it has built a goodwill in the mark through extensive use on  its furniture products and related services marketed through Complainant's retail outlet in Granite Falls, North Carolina, and numerous third-party retailers as well as on its website at <www.bernhardt.com>.

 

The disputed domain name <bernhardthome.com> consists of Complainant's BERNHARDT mark in its entirety, in combination with the descriptive word "home" and the gTLD extension <.com>.

 

Complainant's mark is the initial and dominant element in the disputed domain name, and it is well settled that when a domain name at issue contains a complainant's mark in its entirety, it is deemed to be confusingly similar.

 

The addition of the descriptive word "home", does not add any distinguishing character, so its presence within the disputed domain name and does not prevent a finding that the disputed domain name is confusingly similar to the BERNHARDT mark.

 

Neither does the gTLD extension <.com> prevent a finding that the disputed domain name is confusingly similar to Complainants' mark because in the circumstances of this proceeding, it would be considered by Internet users as a necessary technical requirement for an Internet domain name.

 

This Panel finds therefore that in each case the disputed domain name is confusingly similar to the BERNHARDT mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out an uncontested prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The disputed domain name <bernhardthome.com> was registered on August 24, 2023 and Complainant's rights in United States registered trademark BERNHARDT, date back to April 10, 1973.

 

Complainant has made out a convincing uncontested case that it has established rights and goodwill in the mark through use on its website at <www.bernhardt.com> and through retail outlets.

 

It is implausible that the registrant of the disputed domain name was unaware of Complainant's BERNHARDT mark, particularly as the registrant chose to combine the mark with the word "home" which infers a reference to Complainant's business, products and services.

 

Therefore the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant's reputation.

 

In making this finding, this Panel is conscious that the exhibited screen capture of Respondent's website at <www.bernhardthome.com> shows that the disputed domain name is being used by Respondent to present a website that purports to impersonate Complainant, using Complainant's mark, copying the images and content of Complainant's website and thereby demonstrating that Respondent is targeting Complainant's business, and goodwill.

 

Such use of the disputed domain name within the address of Respondent's website is on the balance of probabilities intended to attract, intercept and divert Internet traffic seeking Complainant's valid website, and to mislead and confuse Internet users by impersonating Complainant.

 

In these circumstances, this Panel finds on the balance of probabilities that Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant's BERNHARDT mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) in respect of each of them.

 

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

 

 

 

James Bridgeman SC, Panelist

Dated: April 10, 2024