DECISION

 

Buff City Soap Holdings, LLC v. Cary Nedd / CaryNedd

Claim Number: FA2409002115188

 

PARTIES

Complainant is Buff City Soap Holdings, LLC ("Complainant"), represented by Adam S. Baldridge and Nicole Berkowitz Riccio of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Tennessee, USA. Respondent is Cary Nedd / CaryNedd ("Respondent"), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buffcitysoaps.club>, registered with NameCheap, 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 11, 2024; Forum received payment on September 11, 2024.

 

On September 11, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <buffcitysoaps.club> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@buffcitysoaps.club. Also on September 17, 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 October 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant offers a variety of cosmetics and cleaning preparations, including bar soaps, lotion bars, shower fizzies, body and foot scrubs, shower oils, body butters, shampoo bars, bath bombs, facial cleansers, facial scrubs, facial toners, facial creams, lip balms, beard oils, beard balms, pet bar soaps, and powdered laundry detergents, and related products to a nationwide market. Complainant uses the Buff City and BUFF CITY SOAP marks in that regard.

 

Complainant is the owner of federal and common law rights to the BUFF CITY SOAP trademarks in connection with a variety of cosmetics and cleaning preparations and related products and has registered such marks in the United States and China. Complainant operates its online retail store at <buffcitysoap.com>.

 

Respondent's <buffcitysoaps.club> domain name is virtually identical to Complainant's BUFF CITY SOAP trademark as Respondent's domain name contains the BUFF CITY SOAP mark and merely adds an "s" and the ".club" top-level to form the domain name.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent's registration and use of the domain name and its mimicry of the Complainant's website are a blatant attempt to trade on the goodwill associated with Complainant's BUFF CITY SOAP trademark. Respondent has no connection with Complainant and has not received consent to use the BUFF CITY SOAP mark in any manner. Respondent uses the <buffcitysoaps.club> domain name as part of a fraudulent scheme to induce customers to provide sensitive personal and financial information to Respondent.

 

Respondent registered and is using the at-issue domain name in bad faith. Respondent has intentionally attempted to attract, for its own gain or ill intent, internet users to Respondent's <buffcitysoaps.club> website. Respondent's creates a likelihood of confusion with the Complainant's BUFF CITY SOAP mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Respondent is attempting to trade on the goodwill of Complainant's brand in order to fraudulently induce customers to divulge sensitive information as the <buffcitysoaps.club> website makes explicit reference to the exact same goods provided by Buff City and uses Buff City's copyrighted photographs. Respondent had actual knowledge of Complainant's marks as Respondent's website uses a stylized version of the BUFF CITY SOAP trademark that is identical to Complainant's stylized mark. Further, Respondent's use of a privacy shield is indicative of Respondent's bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the BUFF CITY SOAP mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the BUFF CITY SOAP trademark.

 

Respondent's uses the at-issue domain name and website to pass itself off as Complainant in order to fraudulently induce customers to divulge sensitive private personal 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it registered its BUFF CITY SOAP trademark with the USPTO as well as with other trademark agencies worldwide. Any of such registrations demonstrates Complainant's rights in a mark under the Policy. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's at-issue domain name consists of Complainant's BUFF CITY SOAP trademark followed by an "s" and the ".club" top-level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that <buffcitysoaps.club> is confusingly similar to Complainant's BUFF CITY SOAP trademark. See CFA Properties, Inc. v. Mike Tomson, FA176500, (Forum November 28th, 2017) (finding that adding the letter "s" to complainant's trademark within a domain name does not distinguish such domain name from Complainant's mark under the Policy).

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademarks in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of <buffcitysoaps.club>. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for the at-issue domain name identifies the domain name's registrant as "Cary Nedd/CaryNedd" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <buffcitysoaps.club> or any variation thereof. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent uses <buffcitysoaps.club> to address a website mimicking Complainant's genuine website. There, Respondent is intent on duping internet visitors into giving up personal and financial information for when a consumer attempts to purchase items from the <buffcitysoaps.club> website, the Respondent does not actually complete the purchase. Instead, Respondent retains the personal and financial information garnered through consumer interaction with Respondent's sham website. Respondent's use of the at-issue domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) ("[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.").

 

Given the forgoing, Respondent's lacks rights and lacks legitimate interests in respect of <buffcitysoaps.club>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith under the Policy.

 

Respondent uses its confusingly similar domain name and referenced website so that Respondent might pass itself off as Complainant and deceive internet users into falsely believing that the <buffcitysoaps.club> domain name is sponsored by Complainant. Thereby, Respondent operates a phishing scheme under the pretense of the <buffcitysoaps.club> website being an online store sponsored by Complainant. Respondent's bogus online store is designed to defraud third parties into giving up their personal financial data to Respondent. Respondent's use of <buffcitysoaps.club> to trick third-parties into revealing personal and financial information demonstrates Respondent's bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) ("[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in BUFF CITY SOAP when it registered <buffcitysoaps.club> as a domain name. Respondent's prior knowledge of Complainant's BUFF CITY SOAP trademark is evident from the notoriety of Complainant's mark and from Respondent's use of the at-issue domain name to attempt to pass off as Complainant as discussed elsewhere herein. Respondent's registration and use of <buffcitysoaps.club> with knowledge of Complainant's rights in BUFF CITY SOAP further shows Respondent's bad faith registration and use of <buffcitysoaps.club>. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) ("Complainant contends Respondent's appropriation of Complainant's trademark was a clear intent to trade upon Complainant's reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant's mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii)."); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <buffcitysoaps.club> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated: October 8, 2024