DECISION

 

Target Brands, Inc. v. Dewberry Reynaldo / SanjuanBonnie

Claim Number: FA2502002140163

 

PARTIES

Complainant is Target Brands, Inc. ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Dewberry Reynaldo / SanjuanBonnie ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <brightroomstore.com> and <brightroomhotsale.com>, registered with Gname.com Pte. Ltd. and Realtime Register B.V.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 13, 2025; Forum received payment on February 13, 2025.

 

On February 14, 2025, Gname.com Pte. Ltd. and Realtime Register B.V. confirmed by e-mail to Forum that the <brightroomstore.com> and <brightroomhotsale.com> domain names are registered with Gname.com Pte. Ltd. and Realtime Register B.V. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. and Realtime Register B.V. have verified that Respondent is bound by the Gname.com Pte. Ltd. and Realtime Register B.V. registration agreements 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 February 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@brightroomstore.com and postmaster@brightroomhotsale.com. Also on February 14, 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 March 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."

 

The Panel finds that the domain names are under common control as the websites displayed at these domains are very similar and are used to impersonate Complainant. Further, both domain names were registered in November 2024. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA 133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA 1787251 (Forum June 20, 2018).

 

Consequently, the Panel will rule on both contested domain names, and the two registrants are collectively referred to as "Respondent".

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that owns, promotes, and enforces the trademark BRIGHTROOM and makes extensive use of it. Since 2022. Complainant commenced use of the mark in connection with in-store and online offering of BRIGHTROOM storage and home organization products. Complainant states that it is consistently ranked as one of the most philanthropic companies in the U.S. and has been a major benefactor of relief efforts, including monetary and product donations after the September 11th attacks in 2001, the tsunami in South Asia in 2004, and Hurricane Katrina in 2005. The recipient of a number of business awards, Complainant's accolades include being named one of America's Most Popular Stores by Forbes magazine from 2009-2016, receiving recognition as one of the "Top 50 Companies for Diversity" in 2016 from the Diversity Inc magazine, and Fortune magazine ranked Complainant No. 15 on its list of the 20 Most Generous Companies of the Fortune 5000. Complainant asserts rights in the mark BRIGHTROOM through its registration in the European Union in 2021. The mark is registered elsewhere around the world.

 

Complainant alleges that the disputed domain names are identical or confusingly similar to its BRIGHTROOM mark because they incorporate the mark in its entirety, merely adding generic/descriptive terms, together with the generic top level domain ("gTLD") ".com".

 

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use its mark. Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent used the disputed domain names to impersonate Complainant: they were used for fake BRIGHTROOM branded webshops, presumably to trick users into placing orders and entering their personal information as part of a phishing attempt or perhaps for the sale of counterfeit merchandise.

 

Further, says Complainant, Respondent registered and used the disputed domain names in bad faith. Respondent has created a likelihood of confusion as to the source of the resolving websites. The resolving websites impersonated Complainant. Respondent had actual knowledge of Complainant's mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark BRIGHTROOM and uses it to market storage and home organization products.

 

Complainant's rights in its mark date back to 2021.

 

The disputed domain names were registered in 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

Respondent used the disputed domain names to impersonate Complainant; the resolving websites displayed Complainant's mark and images of Complainant's products.

 

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 disputed domain names incorporates Complainant's BRIGHTROOM mark in its entirety, merely adding generic/descriptive terms, together with the generic top level domain ("gTLD") ".com". Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent has not been licensed or authorized by Complainant to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information of record identifies the registrants of the disputed domain names as "Dewberry Reynaldo / SanjuanBonnie". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant presents evidence showing that Respondent used the disputed domain names to impersonate Complainant. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Edible Communities v. Thoreau,  FA 1158554 (Forum Apr. 16, 2008) ("[R]espondent's use of the disputed domain name [<theedibleaustin.com>] to pass itself off as [c]omplainant shows that [r]espondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) as well as Policy ¶4(c)(iii)."); see also Digg v. Digg , FA 1220833 (Forum Oct. 9, 2008) (finding no legitimate interest in respondent's use of the domain name <digg-inc.com> because "[r]espondent is attempting to pass itself off as [c]omplainant" and such "actions do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.

 

Indeed, as already noted, the resolving websites attempted to impersonate Complainant. This can evince bad faith registration and use under Policy ¶ 4(a)(iii). See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA 156251 (Forum May 30, 2003) (the resolving website gave every appearance of being associated or affiliated with Complainant's business); see also Mortgage Research Center LLC v. Russell Miranda, FA 993017 (Forum July 9, 2007) (Respondent is implying an affiliation with Complainant, and consumers seeking Complainant's products and services may become confused when encountering Respondent's website). Thus the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).

 

Further, Respondent registered the disputed domain names with actual knowledge of Complainant's mark: the resolving websites displayed Complainant's mark and images of Complainant's products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also 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 ¶ 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 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). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain names and that this constitutes bad faith under 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 <brightroomstore.com> and <brightroomhotsale.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: March 7, 2025