DECISION

 

Bulletproof 360, Inc. v. Richard Bares

Claim Number: FA2403002089152

 

PARTIES

Complainant is Bulletproof 360, Inc. ("Complainant"), represented by Christian W. Marcelo, of Perkins Coie LLP, Washington, USA. Respondent is Richard Bares ("Respondent"), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bulletproofnutritionsupplements.com>, registered with GoDaddy.com, LLC.

 

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 19, 2024; Forum received payment on March 19, 2024.

 

On March 19, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <bulletproofnutritionsupplements.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@bulletproofnutritionsupplements.com. Also on March 21, 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.

 

A document purporting to be a Response was received by Forum on April 5, 2024, but it did not emanate from the Respondent but from another person and was said to be on behalf of the Respondent. It also did not comply with the ICANN Rules.

 

On April 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

A preliminary issue arises as to whether the Panel should order the transfer of the domain name by consent and without the usual consideration of all of the criteria set out in the Policy that must be proved.

 

The Respondent has in effect requested that this be done on the basis of that consent. In support of that request, a document purporting to be a Response was received by Forum on April 5, 2024. That document stated:

 

"I'm writing on behalf of Richard Bares and we are willing to transfer this domain, bulletproofnutritionsupplements.com, to whomever would like it. We have also deleted all Cloudflare DNS records related to this domain as well to ensure the recipient of the domain can utilize it without issue.

To make it easy can you send the email to ben.meredith@optum.com to ensure I can get it transferred as soon as I receive it.

Thank you,

Ben Meredith

Director Information Security".

 

Panels sometimes order the transfer of a domain name by consent but are not obliged to do so, as they have a discretion to do so or not and should only make a consent order after considering all of the circumstances.

 

After considering all of the circumstances, the Panel has decided not to make a consent order, but to proceed to the usual analysis of all of the criteria set out in the Policy and to make a decision on the evidence. The reasons for proceeding in that manner are as follows.

 

First, the purported consent is not from the Respondent but from another person who represents the company Cloudflare which in turn seems to perform some function for the Respondent. What exactly that function is, is not made clear by any evidence. Its website at https://www.cloudflare.com/what-is-cloudflare/ states under the question "What is Cloudflare?" that:

"Cloudflare is the cloud for the "everywhere world"(.)Today, everything needs to be connected to everything everywhere, all the time. This hyperconnectivity creates new challenges related to security, performance, resilience and privacy."

Whatever that means, it does not mean that the author of the communication of April 5, 2024 is the Respondent and clearly it is not. The Panel would only make a consent order if the request to do so came from the Respondent as a domain name holder who is bound by the UDRP.

Secondly, the Panel has read the evidence and finds, as will be seen, that it reveals that there has been a serious infringement of the Complainant's trademark which calls for some sort of explanation. Likewise, the Respondent has clearly taken the substance of the Complainant's website and copied it, making wholesale use of the Complainant's website and pretended that it is the Complainant or that it has been authorized by the Complainant to use its trademark when in fact it is neither. Moreover, Respondent registered the <bulletproofnutritionsupplements.com> disputed domain name on November 30, 2022, and the Respondent has therefore been trading on the Complainant's trademark by including it in its domain name for over a year. Accordingly, the author of the communication of April 5, 2024 is in effect asking the Panel to ignore all of this and not adjudicate on it, but with no reason being given why it should do so. In all the circumstances, the Panel is not prepared to do that in the absence of any reasons or explanation being given.

The Panel therefore exercises its discretion not to make an order by consent but will proceed to deal with the proceeding in the usual manner.

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       Complainant is a United States company engaged in the provision of nutrition, health and wellness goods and services, including coffee and nutritional supplements and it has been so engaged since 2011.

2.       Complainant provides those goods and services under the trademark for BULLETPROOF. In particular, the evidence will establish that Complainant has acquired registered trademark rights in the BULLETPROOF trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,253,196, registered on December 4, 2012 ("the BULLETPROOF trademark"). The Complainant has used the BULLETPROOF trademark for many years to offer its services.

3.       The BULLETPROOF trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.       As well as its trademark, Complainant has registered the domain name <bulletproof.com> that it uses in its business and in particular for its website at www. bulletproof.com ("the Complainant's website").

5.       Respondent registered the <bulletproofnutritionsupplements.com> disputed domain name on November 30, 2022, ("the disputed domain name").

6.       The disputed domain name embodies the BULLETPROOF trademark without the consent of the Complainant and with the addition of the generic words "nutrition" and "supplements" and the generic Top Level Domain ".com".

7.       The disputed domain name is confusingly similar to the BULLETPROOF trademark as it includes, as well as the word "bulletproof", the generic words "nutrition" and "supplements" which means that the domain name is associated with the Complainant's offering of Bulletproof nutrition supplements and its other products, and also the generic Top Level Domain ".com", none of which can negate a finding of confusing similarity.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)                      the Respondent does not hold any trademark rights in BULLETPROOF and is not an authorized dealer, distributor or licensee of the Complainant and has not been authorized to use the BULLETPROOF trademark;

(b)                      the Respondent registered the disputed domain name on November 30, 2022 which was well after the Complainant had acquired its rights in the BULLETPROOF trademark;

(c)                      the Respondent has not made a bona fide use of the domain name within the meaning of Policy ¶ 4(c)(i) as it has been used to impersonate the Complainant by means of a copy of the Complainant's website and to perpetrate a phishing scheme;

(d)                      the Respondent has used the domain name to trade off the Complainant's reputation and its sale of nutrition supplements and related goods and services; and 

(e)                      the Respondent is not commonly known by the domain name.

9.       The Respondent has registered and is using the domain name in bad faith. That is so because:

(a)       the Respondent has intentionally attempted to attract internet users by creating confusion as to its relationship to the Complainant and for commercial gain within the meaning of Policy ¶ 4(b)(iv);

(b)       the Respondent had actual knowledge of the Complainant's BULLETPROOF trademark when it registered the disputed domain name;

(c)       the Respondent registered and has used the domain name to impersonate the Complainant and infringe its intellectual property rights;

(d)       the Respondent registered and used the domain name primarily to disrupt the Complainant's business.

(e)       the Respondent's use of the domain name is an unlawful attempt to mislead internet users; and

(f)       the entirety of the Respondent's conduct shows bad faith registration and use of the domain name.

B. Respondent

A document purporting to be a Response was received by Forum on April 5, 2024, but it did not emanate from the Respondent but from another person and was said to be on behalf of the Respondent. It also did not comply with the ICANN Rules.

 

FINDINGS

1.       Complainant is a United States company engaged in the provision of nutrition, health and wellness goods and services, including coffee and nutritional supplements and it has been so engaged since 2011.

2.       Complainant provides those goods and services under the trademark for BULLETPROOF. In particular, the evidence establishes that Complainant has acquired registered trademark rights in the BULLETPROOF trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,253,196, registered on December 4, 2012 ("the BULLETPROOF trademark"). The Complainant has used the BULLETPROOF trademark for many years to offer its services.

3.       Respondent registered the <bulletproofnutritionsupplements.com> disputed domain name on November 30, 2022, ("the disputed domain name").

4.       The disputed domain name embodies the BULLETPROOF trademark without the consent of the Complainant and with the addition of the generic words "nutrition" and "supplements" and the generic Top Level Domain ".com".

5.       Respondent has caused the disputed domain name to resolve to a website purporting to be a website of or associated with the Complainant and which offers products for sale that are in substance the same as the products legitimately sold by the Complainant.

6.       By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's BULLETPROOF trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

7.        Accordingly, the disputed domain name should be transferred to the Complainant.

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.

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has established that Complainant has acquired registered trademark rights in the BULLETPROOF trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,253,196, registered on December 4, 2012 ("the BULLETPROOF trademark"). It has also established that it has used the BULLETPROOF trademark for many years to offer its goods and services.

The next question that arises is whether the disputed <bulletproofnutritionsupplements.com> is identical or confusingly similar to the Complainant's BULLETPROOF trademark. The Panel finds that the disputed domain name is confusingly similar to the BULLETPROOF trademark for the following reasons. In formulating the domain name, the Respondent has incorporated the BULLETPROOF trademark itself and has added the generic words "nutrition" and "supplements" which means that the domain name is associated with the Complainant's offering of Bulletproof nutrition supplements and related goods and services. Internet users would undoubtedly interpret the domain name in that way.

It has also added the generic TLD ".com" which is routinely not taken into account by panels for the purposes of the comparison being made, as all domain names must have such an extension.

Thus, in the present case, internet users would read the domain name as invoking the Complainant's BULLETPROOF trademark, not only despite the addition of the generic words "nutrition" and "supplements" but because of it, as it emphasizes that meaning. Internet users would conclude that the domain name related to the Complainant and its business of providing nutrition supplements and related goods and services under the trademark and that it was intended to be so read. Thus, the domain name is similar to the trademark and confusingly so, the confusion being that the domain name would undoubtedly be seen as a domain name of the Complainant or as one that was authorized by it. Internet users would also assume that the domain name would lead to an official BULLETPROOF website or one that was authorized by the Complainant.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's BULLETPROOF trademark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations, taking them in the order in which they are articulated by the Complainant:

(a)                      the Respondent does not hold any trademark rights in BULLETPROOF and is not an authorized dealer, distributor or licensee of the Complainant and has not been authorized to use the BULLETPROOF trademark; this has all been verified by the evidence; the Respondent's use of the Complainant's trademark has therefore been illegitimate from the moment it registered the domain name; 

(b)                      the Respondent registered the disputed domain name on November 30, 2022 which was well after the Complainant had acquired its rights in the BULLETPROOF trademark; this has been established by the evidence and it is important, as it shows that the Complainant's trademark was well-established by the time the domain name was registered; it must also be concluded that the Respondent had at least some knowledge of the trademark at that time and, as will be seen later in this decision, the Panel's conclusion is that the Respondent had actual notice of the trademark;

(c)                      the Respondent has not made a bona fide use of the domain name within the meaning of Policy ¶ 4(c)(i) as it has been used to impersonate the Complainant by means of a copy of the Complainant's website and to perpetrate a phishing scheme; this has been established by the evidence, particularly by the Complainant's Annex 4 which is the Respondent's website and Annex 5 which is the Complainant's website. It is clear from a comparison of the two that the Respondent's website is a wholesale copy of the Complainant's website and that it must be seriously misleading to internet users. Annex 4 shows extensive use of the BULLETPROOF trademark, packaged goods, virtually all of which carry the BULLETPROOF name and trademark, buttons marked "BUY NOW" and "JOIN NOW", the latter being for "rewards", endorsements clearly designed to give an air of authenticity to the website and the usual accoutrements of deceptive websites. Moreover, it is clear from the offending website that the Respondent has clearly asserted that it is the Complainant or is authorized by the Complainant to use its name and trademark. It would therefore be a perversion of the language to assert that such conduct was bona fide or within the meaning of Policy ¶ 4(c)(i) as it is the opposite of that expression;

(d)                      the Respondent has used the domain name to trade off the Complainant's reputation and its sale of nutrition supplements and related goods and services; this has also been established by the evidence and is a natural consequence of the conclusions already reached above;

(e)                      the Respondent is not commonly known by the domain name; there is no evidence that the Respondent is commonly known by the domain name or anything remotely like it; moreover, it cannot be concluded that anyone named Richard Bares would answer to the name <bulletproofnutritionsupplements.com>;

(f)                      it should also be added that the Respondent is not making a legitimate noncommercial or fair use of the domain name; there is nothing legitimate in a party stealing a trademark and pretending that it is or is authorized by the trademark owner to sell the same goods as those sold by the trademark owner; nor is it noncommercial, as it was obviously being done to make money, which is commercial; nor is it fair;

The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against Respondent.

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

The Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds set out above. It is not necessary to repeat them here. In view of the evidence also discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the entire modus operandi of the Respondent has clearly been motivated by bad faith in both the registration and the use of the domain name. In particular, it is clear from the evidence that:

(a) the Respondent has intentionally attempted to attract internet users by creating confusion as to its relationship to the Complainant and for commercial gain within the meaning of Policy ¶ 4(b)(iv); it is clear from the evidence that the Respondent wanted internet users to think that it was the Complainant or was authorized by it and that it set about confusing them by extensively using the BULLETPROOF trademark and offering to sell the Complainant's products branded with that trademark; that course of conduct must have engendered in the minds of internet users confusion whether the offerings on the Respondent's website were genuine or not; the Respondent encouraged that confusion by impersonating and passing itself off as the Complainant;

(b) the construction of the domain name and the detail in the Respondent's website show that the Respondent knew of the Complainant and its trademark rights when it chose its target and set about impersonating it and that it therefore had actual knowledge of the Complainant and its trademark when it, the Respondent, registered the domain name;

(c) the evidence shows that the Respondent registered and used the domain name primarily to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);

(d) the Respondent's use of the domain name was an unlawful attempt to mislead internet users; clearly the effect of the use of the domain name and the website was an attempt to defraud internet users by falsely encouraging them to believe that they were dealing with the Complainant when they were not;

(e) the evidence shows that the entirety of the Respondent's conduct amounts to bad faith registration and use of the domain name.

All of the foregoing matters show bad faith registration and use, as the domain name was registered on an unauthorized use of the Complainant's trademark, the creation of a confusingly similar domain name, the Respondent's use of the domain name to pretend that it was or was authorized by the Complainant, the offer of products being the same as those of the Complainant and laying the groundwork for a phishing expedition.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the BULLETPROOF trademark and in view of the conduct that the Respondent has engaged in when using it, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has established all of the elements that it must show under the Policy and it is therefore entitled to the relief it seeks.

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

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: April 9, 2024