DECISION

 

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

Claim Number: FA2501002134473

 

PARTIES

Complainant is Buff City Soap Holdings, LLC ("Complainant"), represented by 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 <buffcityssoapus.shop>, 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 9, 2025; Forum received payment on January 9, 2025.

 

On January 10, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <buffcityssoapus.shop> 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 January 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025 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@buffcityssoapus.shop. Also on January 13, 2025, 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 4, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant offers a wide range of cosmetics and cleaning preparations. Complainant has continuously marketed, advertised, sold, and offered for sale its goods and services under the BUFF CITY SOAP trademarks since at least 2016. Complainant has rights in the BUFF CITY SOAP mark through its registration with the USPTO (e.g., Reg. No. 5,399,187, registered February 13, 2018). The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates Complainant's mark, with the only differences being the addition of "s" after "buffcity," the abbreviation "us" after "soap," and the use of the top-level domain ".shop."

 

ii) Respondent has engaged in unlawful activities. Respondent has configured the disputed domain name to deceive consumers into providing sensitive personal and financial information through a fraudulent webpage. More specifically, Respondent has created an imitation of Buff City Soap's official website.

 

iii) Respondent has no rights or legitimate interests in the disputed domain name, as Respondent does not offer any goods or services of its own through it. Respondent is not commonly known by the disputed domain name and holds no legitimate trademark, service mark, trade name, or any similar rights to the BUFF CITY SOAP mark. Furthermore, Respondent is not making any bona fide non-commercial or fair use of the disputed domain name.

 

iv) The disputed domain name was registered and is being used in bad faith. By using the disputed domain name, Respondent has deliberately attempted to attract Internet users to its website for personal gain or other illegitimate purposes. The website associated with the disputed domain name explicitly references the same goods offered by Complainant and displays Complainant's copyrighted photographs. Respondent's actual knowledge of Complainant's marks, including its logo and copyrighted images, is evident. Additionally, Respondent's use of a privacy shield, given the surrounding circumstances, further indicates bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. Respondent registered the disputed domain name on October 7, 2024.

 

2. Complainant has established rights in the BUFF CITY SOAP mark through its registration with the USPTO (e.g., Reg. No. 5,399,187, registered February 13, 2018).

 

3. Respondent is using the disputed domain name for an online retail store that offers a variety of cosmetics and cleaning products, which are branded and advertised under Complainant's BUFF CITY SOAP mark.

 

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 asserts rights in the BUFF CITY SOAP mark through its registration with the USPTO (e.g., Reg. No. 5,399,187, registered on February 13, 2018). Registration of a mark with the USPTO is typically considered valid evidence of rights in a mark under Policy ¶ 4(a)(i). Since Complainant has provided proof of its trademark registration with the USPTO, the Panel concludes that Complainant has established rights in the BUFF CITY SOAP mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name, <buffcityssoapus.shop>, is confusingly similar to its BUFF CITY SOAP mark because it incorporates the mark in its entirety, with the only differences being the addition of "s" after "buffcity," the abbreviation "us" after "soap," and the use of the ".shop" gTLD. The inclusion of geographic or generic terms and a gTLD is insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) ("The addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (finding that the addition of the term "advisors" and the ".com" gTLD to the complainant's mark did not negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The omission or addition of a single letter as well as a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Webster Financial Corporation and Webster Bank, National Association v. Tanya Moulton, FA 2034214 (Forum Apr. 11, 2023) ("When a disputed domain name wholly incorporates another's mark, adding a single letter is insufficient to defeat a finding of confusing similarity."; finding <fwebsteronline.com> domain name confusingly similar to WEBSTER and WEBSTER ONLINE trademarks); ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) ("The Panel finds that the disputed domain name is confusingly similar to Complainant's mark because it differs from Complainant's mark by merely adding the letter 'L' . . . "). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's BUFF CITY SOAP mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the  disputed  domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use Complainant's mark; and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS information lists "Cary Nedd / CaryNedd" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use. The disputed domain name resolves to a website that prominently displays the BUFF CITY SOAP trademarks to mimic the goods and services offered by Complainant. Respondent created an imitation of Complainant's website.

 

Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to offer competing and related services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio-visual services for unauthorized audio-visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.").

 

Complainant provides a screenshot of the website to which the disputed domain name resolves, as well as that of Complainant's own website, demonstrating Respondent's mimicry of Complainant's website. Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case based on the considerations above. All of these factors contribute to establishing a prima facie case against Respondent. As Respondent has neither filed a Response nor otherwise attempted to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant asserts that by using the disputed domain name, Respondent has deliberately attempted to attract Internet users to its website for personal gain or other illegitimate purposes. The website associated with the disputed domain name explicitly references the same goods offered by Complainant and displays Complainant's copyrighted photographs.

 

Under Policy ¶ 4(b)(iv), using a disputed domain name to pass off as Complainant and offer similar or competing services may constitute evidence of bad faith attraction for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith under Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website that passed off as the complainant and offered online cryptocurrency services in direct competition with the complainant's business). The Panel recalls the screenshot of the website to which the disputed domain name resolves, which purports to offer various cosmetic preparations, including soaps, in competition with Complainant's business. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant further contends that Respondent registered and is using the disputed domain name with actual knowledge of Complainant's rights in the BUFF CITY SOAP mark. While constructive knowledge alone is insufficient for a finding of bad faith under Policy ¶ 4(a)(iii), registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith and can be inferred from the notoriety of the mark and the manner in which Respondent uses the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy paragraph 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy paragraph 4(a)(iii).").

 

The Panel agrees and infers, based on Respondent's use of the disputed domain name—including its mimicry of Complainant's website and the notoriety of Complainant's mark—that Respondent had actual knowledge of Complainant's rights in the BUFF CITY SOAP mark at the time of registration. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

 

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 <buffcityssoapus.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 5, 2025