The Complainant is B & H Foto & Electronics Corp. of New York, New York, United States of America, represented internally.
The Respondent is Above.com Domain Privacy / Domain Admin, Huanglitech of Beaumaris, Victoria, Australia, respectively of Shenzhen, Futian District, People's Republic of China.
The disputed domain name <bhohoto.com> (“Domain Name”) is registered with Above.com, Inc.
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 Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 26, 2010, Above.com, Inc. 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 27, 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 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 proceedings commenced on May 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2010.
The Center appointed Charters Macdonald-Brown 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 is the owner of the registered trade mark B & H, with registration number 2229004 which was registered on March 2, 1999 at the United States Patent and Trademark Office (“USPTO”), and of the registered trade mark B & H PHOTO - VIDEO - PRO AUDIO, with registration number 2230867 which was registered on March 9, 1999 at the USPTO (the “Trade Marks”). The trade mark B & H PHOTO - VIDEO - PRO AUDIO is a device mark, of which the B & H element is dominant. The words PHOTO - VIDEO - PRO AUDIO are in a smaller font and are descriptive.
The Complainant has not claimed any rights in unregistered trade marks.
The Complainant owns the domain names <bhphotovideo.com> and <bhphoto.com>, although the Complainant did not clearly state its ownership of <bhphoto.com> in its Amended Complaint, but merely alluded to it. In accordance with the ability of the Panel to carry out limited factual research it completed a WhoIs search into the ownership of the domain name <bhphoto.com>, which confirmed ownership by the Complainant. The domain name <bhphoto.com> resolves to the domain name <bhphotovideo.com>.
The Domain Name was registered by the Respondent on October 23, 2009. At the time of the submission of the Complaint, the Domain Name resolved to a web portal comprising sponsored links.
The Complainant claims that it has either registered the Trade Marks, or has filed applications to register the Trade Marks in over 80 countries. The Complainant has established rights in the Trade Marks through registration and use. The Domain Name is identical or confusingly similar to the Trade Marks, according to the Complainant.
The Complainant further claims that the Respondent does not possess any rights or legitimate interests in the Domain Name.
The domain name <bhphotovideo.com> is included in the Complainant's advertising materials and its catalogues. The Complainant claims it advertises extensively and that it has invested several million dollars over the years to publicise the Trade Marks and the domain name <bhphotovideo.com>.
Consequently, the Complainant claims that the Domain Name has been registered and is being used in bad faith and that this use is in order to confuse Internet users as to the source, or affiliation of the Respondent's website and to disrupt Internet traffic intended for the Complainant.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 in bad faith and is being used in bad faith.
The most distinctive part of the Complainant's Trade Marks is the B & H element.
The domain name system does not allow the use of the symbol “&” (ampersand) as part of a domain name. Hence the symbol “&” does not feature in the Complainant's domain names nor in the Domain Name. See Bang & Olufsen a/s v. Unasai Inc., WIPO Case No. D2005-0728.
If one disregards the symbol “&”:
(a) the Domain Name only differs from the Complainant's B & H registered trade mark by the addition of the letters “ohoto” into the Domain Name;
(b) the Domain Name only differs from the Complainant's B & H PHOTO - VIDEO - PRO AUDIO registered trade mark by the substitution of the “p” for an “o” and removal of the words “- VIDEO - PRO AUDIO”.
There is only one letter difference between the letters “ohoto” and the word “photo” and the letters “o” and “p” are next to each other on a QWERTY keyboard, so there is a high probability that this single letter substitution might occur as a result of a mistake when typing. The registration of the Domain Name by the Respondent appears to be an example of “typosquatting”. See Amazon.com Inc v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517.
Further, the words “- VIDEO - PRO AUDIO” have minimal impact on the distinctiveness of the B & H PHOTO - VIDEO - PRO AUDIO trade mark.
The Panel finds that, despite the mentioned variations, there is a close similarity both aurally and visually between the Domain Name and the Trade Marks.
The suffix “.com” does not distinguish the Domain Name from the Complainant's Trade Marks.
Given the foregoing, the Panel finds that the Domain Name and the Trade Marks are confusingly similar due to common mistyping. See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150.
The Panel has considered the Complainant's allegation that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Respondent has not been authorised or licensed in any way to use the Trade Marks. The Respondent's website directs users to other websites, and does not appear to engage in the business of selling products or services directly. Since the Respondent has not submitted any response, these allegations have not been contested.
Because it is generally difficult for the Complainant to prove the fact that the Respondent does not have any rights or legitimate interests in the domain names at issue, (while the Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy), previous decisions under the UDRP have found it sufficient for the Complainant to make a prima facie case for its assertion. See, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
The Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration and use of the Domain Name in bad faith. By not submitting a response, the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and use the Domain Name in bad faith.
The Policy paragraph 4(b) sets forth four non-comprehensive illustrations of situations that may be deemed to reflect “bad faith” registration and use of a domain name. The Panel finds that one of these has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Domain Name has been used by the Respondent to resolve Internet users to a web portal with sponsored links to retail comparison sites that advertise photographic equipment. The Respondent is assumed to be deriving a financial benefit from web traffic diverted through the Domain Name to the sponsored links. The Panel finds that this use of the Domain Name is for commercial gain and reflects the Respondent's attempt to attract users to its website by improperly associating itself with the Trade Marks or misleadingly suggesting an affiliation with, or sponsorship by, the Complainant.
Once all these circumstances have been taken into account, the Panel finds that the Respondent registered and used the Domain Name in bad faith.
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 <bhohoto.com> be transferred to the Complainant.
Dated: July 12, 2010