The Complainant is B & H Foto & Electronics Corp. of New York, New York, United States of America, internally represented.
The Respondents are Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Jackie Upton of Arlington, Texas, United States of America.
The disputed Domain Name <bhphotovid.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 25, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On May 25, 2010, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 27, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 28, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant, a retailer of photographic, video, and audio devices and accessories, is a corporation organized under the laws of the State of New York and headquartered in New York City. The Complainant holds United States Trademark Registration No. 2229004 for the mark B&H, and No. 2230867 for the mark B & H PHOTO VIDEO PRO AUDIO. Both marks were registered in March 1999, and the Complainant has since obtained trademark registrations for these marks in other countries as well.
Since 1996, the Complainant has operated a website at “www.bhphotovideo.com”, a transactional as well as advertising website. The Complainant also operates a retail “superstore” in New York City and makes mail-order catalogue sales, distributing over five million copies of its catalogues annually in the United States and other countries. The Complainant's marks and website address appear in the retail store, on the website and catalogues, and on other advertising and sales materials.
The Domain Name was registered on April 21, 2010 in the name of the registrar's domain privacy service. As a result of this proceeding, the registrar disclosed the name and contact details for the beneficial owner of the Domain Name, listed as the Respondent Ms. Upton. Ms. Upton has not responded in this proceeding, but a Mr. Rawlins, who identifies himself as her son, sent emails to the Center saying that Ms. Upton did not register the Domain Name and has no knowledge of it. He reported that the postal address given in the contact details is Mr. Upton's but that the telephone number is not hers and appears not to be a working number. Mr. Rawlins concluded, “I think someone used her name and address for something.”
It does not appear that the Domain Name has ever been used for an active website. However, beginning the day after the Domain Name was registered, several of the Complainant's vendors and other suppliers of photographic and video equipment received emails from the email domain corresponding to the Domain Name and purporting to order goods on behalf of the Complainant, to be charged to the Complainant's account. The emails, some of which were furnished with the Complaint, appear to be part of a fraudulent scheme to induce vendors to send goods purchased on credit to an address other than the Complainant's. Suspicious vendors contacted the Complainant and forwarded samples of the emails for investigation. The Complainant subsequently initiated the current proceeding.
The Complainant contends that the Domain Name is confusingly similar to the Complainant's marks and that the Respondents have no rights or legitimate interests in the Domain Name. The Complainant adduces evidence that the Domain Name was used for emails in furtherance of a fraudulent scheme, which indicates bad faith in the registration and use of the Domain Name.
The Respondent privacy service replied only by referring the Center to Ms. Upton as the real party in interest, and the Respondent Ms. Upton did not reply to the Complainant's contentions. A person identifying himself as her son denied that Ms. Upton registered the Domain Name or had knowledge of it. Thus, there has been no substantive Response to the Complaint.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall 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.”
The Complainant indisputably holds registered B&H and B & H PHOTO VIDEO PRO AUDIO trademarks. The Domain Name omits the ampersand (which cannot be used in a domain name for technical reasons) and drops the final “e” and “o” from the word “video,” which is the only difference from the Complainant's own domain name based on its trademarks.
Overall, the Domain Name is visually and phonetically similar to the marks, and the Panel finds that they are confusingly similar for purposes of the first element of the Complaint.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
No Response was submitted in this proceeding, and the available record does not suggest the presence of any of these circumstances. To the contrary, the record indicates that the Domain Name has been used only in connection with an email fraud scheme, which is not a bona fide commercial purpose.
The Panel concludes that the second element of the Complaint has been established.
The Policy, paragraph 4(b), sets out examples of bad faith in the registration and use of a domain name. None of these clearly apply in the current case, particularly where it does not appear that the Domain Name has been used in connection with an active website.
However, the list in paragraph 4(b) is expressly not intended to be exhaustive. There is sufficient evidence in the record to demonstrate that the Domain Name was used in a fraud scheme to send email orders to vendors that would appear to come from the Complainant, using the names of individuals employed by the Complainant and an email domain name differing by only the omitted final two letters from the domain name used by the Complainant. The first of these emails was sent immediately following registration of the Domain Name. Thus, it is safe to conclude that the Domain Name was both registered and used in bad faith.
The Complainant cites the use of a domain privacy service as additional evidence of bad faith. The Panel recognizes that there are legitimate reasons to use domain privacy services, chiefly to avoid unwanted “spam” advertising, fraudulent emails, and malware that might otherwise be delivered to contact addresses harvested from the public WhoIs database. In this case, however, there is also evidence that the registration was effected using an assumed identity and a fabricated telephone number, which is hardly surprising, given the fraudulent nature of the activities for which the Domain Name was procured. False registrant details would be consistent with the other evidence in this case of illicit purposes and uses for the Domain Name.
The Panel finds that the Domain Name was registered and used in bad faith within the meaning of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bhphotovid.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: July 14, 2010