DECISION

 

Brodart Co. v. William Adler / Spirit Leather Works LLC

Claim Number: FA2403002090342

 

PARTIES

Complainant is Brodart Co. ("Complainant"), represented by Lois B. Duquette of McNees Wallace & Nurick LLC, Pennsylvania, USA. Respondent is William Adler / Spirit Leather Works LLC ("Respondent"), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brodartbooks.com>, registered with Squarespace Domains LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge hasno 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 26, 2024; Forum received payment on March 26, 2024.

 

On March 26, 2024, Squarespace Domains LLC confirmed by e-mail to Forum that the <brodartbooks.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace 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 March 27, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@brodartbooks.com. Also on March 27, 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 17, 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.

 

On April 18, 2024 the Panel issued Procedural Order No. 1 requesting additional information from Complainant and allowing Respondent time to make submissions on any such additional information that may be provided. Complainant timely provided the requested information. Respondent did not furnish any timely submissions.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the BRODART trademark and service mark established by its ownership of the United States and Canadian registrations described below and long use of the mark in its business providing library services.

 

Alleging that the disputed domain name is identical or confusingly similar to the BRODART mark in which it has rights Complainant argues that the disputed domain name consists of Complainant's mark the terms "books" and the generic Top-Level Domain ("gTLD") extension <.com>.

 

Complainant contends that the element "books" is a term that may be used in connection with describing the goods and services with which the BRODART mark is used, namely, racks for books, evaluating and categorizing of books, and supplying chosen books together with cataloguing cards.

 

When used in connection with the mark BRODART, implies that the goods or services are offered in connection with Complainant's products and services or are endorsed by Complainant.

 

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

·       Complainant's rights in the BRODART mark de facto October 23, 1973 application to register mark for various goods and services;

·       ICANN.org lists the Registrant Contact Organization as an organization with a mailing address of 225 Varick Street, New York New York 10014;

·       Respondent's acquisition of the disputed domain name was achieved through fraudulent means. Email correspondence exhibited in an annex to the Complaint reveals Respondent's attempts to extort payment from Complainant in exchange for the return of the disputed domain name, which underscores Respondent's lack of legitimate interests; and

·       the website associated with the disputed domain name <www.brodartbooks.com> is currently unavailable.

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent has no known trademarks which would suggest it has rights to the disputed domain name.

 

Furthermore, Complainant asserts that Respondent makes no legitimate use of the disputed domain name because on January 31, 2024, the disputed domain name was fraudulently transferred without authorization and consent, and it appears that Respondent intentionally sought to exploit the BRODART marks for their benefit; and Respondent tried to extort payment from the Complainant to transfer the disputed domain name domain.

 

In response to Procedural Order no. 1 of April 18, 2024, issued by the Panel requesting evidence supporting its assertions, Complainant provided additional evidence,

·       supporting its assertions that the disputed domain name resolves to a website posting a message that it is "currently unavailable" in the form of a screen capture;

·       supporting its assertion that on January 31, 2024, the disputed domain name was fraudulently transferred without its consent, in the form of evidence from <www.archive.com> that it was the owner of the disputed domain name at least as early as November 17, 2009 and used it to promote its products; that on January 31, 2024, Complainant was the victim of an unauthorized hack, and shortly thereafter the website was listed as unavailable; that upon learning of the hack, Complainant reached out to Respondent at the email address listed for Respondent; and for example on February 8, 2024, Respondent responded that they wanted "$9,9000 [sic] otherwise after 5 mins OUR NEW DEMAND will be $50,000…".

 

Complainant also provided requested additional information in the form of WHOIS records over the past 15 years, showing Complainant's ownership of the disputed domain name from as early as November 17, 2009 through March 16, 2018, as well as invoices for renewals of the disputed domain name from 2020 and 2022.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a provider of services to libraries including physical cataloguing and processing and owns and uses BRODART trademark and service mark in its business for which it holds the following registrations:

·       United States trademark BRODART (Stylized), registration number 971,220, registered on the Principal Register on October 23, 1973 for goods and services in international classes 9, 16, 20, and 42;

·       Canadian Registration BRODART and Design, registration number TMA596879 registered on December 9, 2003 for goods in classes 6, 16, 20, and 42;

 

The disputed domain name <brodartbooks.com> was registered on March 18, 2008. Until 2024 it was owned and used by Complainant but Complainant lost control of it to a hacker who is holding it for ransom.

 

The disputed domain name is currently inactive.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs for the disputed domain name, and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding. Respondent has availed of a privacy service to conceal his identity on the published WHOIS.

 

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 BRODART trademark and service mark established by its ownership of the United States and Canadian trademark and service mark registrations described above.

 

The disputed domain name <brodartbooks.com>  consists of Complainant's BRODART mark in its entirety, in combination with the descriptive word "books" 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 "books" 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 Complainant's mark. In fact it is a reference to the field of activity in which Complainant is commercially engaged.

 

Neither does the gTLD extension <.com> prevent a finding of 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 the disputed domain name is confusingly similar to the BRODART 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 a 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

BRODART is a distinctive mark and has been used by Complainant in its business providing library services for many years.

 

The evidence is that Respondent hacked Complainant's IT system and managed to fraudulently take control of the registration of the disputed domain name and proceeded to register it in its own name without the consent of Complainant.

 

As described in the Complaint and supported by the evidence adduced, including the additional evidence provided by Complainant in response to the Procedural Order No. 1, this Panel is satisfied that Respondent acquired the disputed domain name by hacking Complainant's IT system and is passively holding the disputed domain name to make ransom demands of Complainant.

 

Such passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy.

 

Complainant has furthermore provided evidence that Respondent has made extortionate demands for the return of control of the disputed domain name, which constitutes use in bad faith for the purposes of the Policy.

 

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).

 

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

 

 

______________________________________

 

James Bridgeman SC, Panelist

Dated: April 25, 2024