The BoxMaker, Inc. v. Muhammad Faheem / Packaging
Claim Number: FA2203001987414
Complainant is The BoxMaker, Inc. (“Complainant”), represented by Catherine E. Maxson of Davis Wright Tremaine LLP, Washington, USA. Respondent is Muhammad Faheem / Packaging (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boxesmaker.com>, registered with GoDaddy.com, LLC.
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 QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2022; the Forum received payment on March 8, 2022.
On March 9, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <boxesmaker.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 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2022 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@boxesmaker.com. Also on March 10, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a supplier of boxes and other packaging supplies, as well as offering the services of printing boxes, custom product labels, among others. Complainant asserts rights in THE BOXMAKER mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,057,348, registered on October 11, 2016). See Compl. Annex C. Respondent’s <boxesmaker.com> domain name is identical or confusingly similar to Complainant’s THE BOXMAKER mark, as it incorporates the mark in its entirety, only removing the word “the” and adding the letters “es”, as well as the “.com” gTLD.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the THE BOXMAKER mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the Respondent offers competing goods and services at the resolving website.
Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant. Respondent disrupts Complainant’s business by offering competing goods and services. Further, Respondent had actual and/or constructive notice of Complainant’s rights in the THE BOXMAKER mark. Finally, Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the supply of boxes and other packaging supplies, as well as printing boxes, custom product labels, and related goods and services.
2. Complainant has established its rights in the THE BOXMAKER mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,057,348, registered on October 11, 2016
3. Respondent registered the <boxesmaker.com> domain name on June 17, 2019.
4. Respondent uses the disputed domain name to offer competing goods and services at the resolving website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the THE BOXMAKER mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,057,348, registered on October 11, 2016). See Compl. Annex C. When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established its rights in the THE BOXMAKER mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s THE BOXMAKER mark. Complainant argues Respondent’s <boxesmaker.com> domain name is confusingly similar to Complainant’s THE BOXMAKER mark, as it incorporates the mark in its entirety, only removing the word “THE” and adding the letters “es” after “BOX” to make the plural version of the mark. Merely removing a word and adding a few letters is not sufficient to differentiate a disputed domain name from a mark. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). The Panel therefore finds the <boxesmaker.com> domain name is confusingly similar to Complainant’s THE BOXMAKER mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s THE BOXMAKER mark and to use it in its domain name, removing the word “THE” from the trademark and adding the letters “es” after “ BOX” to make the plural version of the mark;
(b) Respondent registered the <boxesmaker.com> domain name on June 17, 2019;
(c) Respondent uses the disputed domain name to offer competing goods and services at the resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights and legitimate interests in the <boxesmaker.com> domain name because Respondent is not authorized to use the THE BOXMAKER mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information suggests Respondent is known as “Muhammad Faheem / Packaging” and there is no evidence to suggest Complainant authorized Respondent to use the THE BOXMAKER mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant also argues Respondent does not use the <boxesmaker.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website offers competing goods and services as Complainant. Using a disputed domain name to redirect users to competing goods and services is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, the Panel notes the screenshots in evidence of the resolving website to determine if Respondent has used the disputed domain name to offer competing services to those of Complainant. See Compl. Annex D. Having done so, the Panel finds Respondent has offered such competing services and therefore finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
All of these matters go to 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.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <boxesmaker.com> domain name in bad faith because Respondent attempts to attract users for its own commercial gain by passing itself off as Complainant. When a respondent mimics a complainant’s website and offers competing goods, the Panel may find the respondent acted in bad faith by attempting to attract users for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). In the present case, the Panel has compared Respondent and Complainant’s websites to see if Respondent has attempted to pass itself off as Complainant. It is very apparent from such an examination that this is exactly what Respondent did and intended to do. See Compl. Annexes D & E. The Panel therefore finds that Respondent has passed itself off as Complainant and thus has acted in bad faith.
Secondly, Complainant submits that, in breach of the Policy, Respondent disrupts Complainant’s business in bad faith by offering competing goods and services. Using a disputed domain name to redirect users to a competing website, thereby disrupting a complainant’s business, means that the Panel may find respondent acted in bad faith in its use of the domain name. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, the Panel has examined the resolving websites to see if Respondent has disrupted Complainant’s business. See Compl. Annexes D & E. Having conducted such an examination, the Panel finds Respondent acted in bad faith in using the domain name in this manner.
Thirdly, Complainant contends Respondent had actual and/or constructive notice of Complainant’s rights in the mark, evidenced by Respondent’s use of the mark and its offer of similar services. Although past panels have not found constructive notice as sufficient for a bad faith determination, actual notice may be determined by looking at the respondent’s use of the mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); 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.”). Here, Complainant submits that Respondent’s offer of competing goods and use of a similar address indicate that Respondent had actual notice of Complainant’s rights in the THE BOXMAKER mark. See Compl. Annexes D & E. As the Panel finds Respondent had actual notice of Complainant’s rights in the THE BOXMAKER mark, the Panel finds bad faith registration of the domain name by Respondent.
Fourthly, Complainant submits that Respondent’s failure to respond to cease-and-desist letters further indicates bad faith. Previously, panels have agreed that not responding or addressing a cease-and-desist letter may indicate bad faith, depending on all the circumstances. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter may constitute bad faith). In the present case, Complainant provides evidence of a letter sent to Respondent and the lack of a reply. See Compl. Annex F. Therefore, the Panel in all the circumstances finds Respondent acted in bad faith in the use and by inference the registration of the domain name.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boxesmaker.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 7, 2022
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