WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross
Case No. D2010-0842
1. The Parties
The Complainant is B & H Foto & Electronics Corp. of New York, New York, United States of America, represented internally.
The Respondents are Domains by Proxy, Inc., Scottsdale, Arizona, United States of America, and Joseph Gross, Teaneck, New Jersey, United States of America. The Respondent Joseph Gross is represented by Traverse Legal, PLC, United States of America.
2. The Domain Names and Registrar
The disputed domain name <bandh.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. Pursuant to a WhoIs database search it had conducted, the Complainant identified the privacy protection service Domains by Proxy, Inc. as the Respondent in its Complaint. On May 25 and 26, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2010, the Registrar transmitted by e-mail to the Center its verification response in which it lifted the privacy shield and indicated that the Domain Name’s true registrant is Joseph Gross of Teaneck, New Jersey. On May 27, 2010, the Center invited the Complainant to file an amendment to the Complaint based on this new information.
On May 27, 2010, the Complainant filed an amended Complaint with the Center, crossing out the original references to Domains by Proxy, Inc. and listing the Respondent Joseph Gross as the sole Respondent. For purposes of these proceedings, therefore, the Panel will consider the Respondent Joseph Gross to be the appropriate substantive Respondent while maintaining the designation of Domains by Proxy, Inc. as an additional Respondent. Henkel Corporation v. Private Whois Service/Katarzyna Bieniek, WIPO Case No. D2010-0147 (treating underlying registrant as the substantive respondent while noting that “[t]he privacy company [must also] be treated as the Respondent [as it results from the Rules that] a UDRP complaint must be filed against the person identified as the registrant in the WhoIs database at the time the Complaint is submitted”); Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253 (treating underlying registrant as substantive respondent). Accordingly, references hereinafter to “the Respondent” are to be construed as references to the Respondent Joseph Gross.
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 Respondents of the Complaint and amended Complaint, and the proceedings commenced on May 28, 2010. Under paragraph 5(a) of the Rules, the due date for Response was June 17, 2010. On June 17, 2010, counsel for the Respondent sent the Center a request for a 10-day extension of the Response’s due date. The Center granted the requested extension to the Respondent on June 18, 2010, permitting the Response to be filed by June 27, 2010.
The Complainant and the Respondent jointly requested a 30-day stay of the proceedings on June 23, 2010 in order to negotiate a resolution of the Domain Name dispute. On June 25, 2010, the Center sent the Complainant, the Respondent, and the Registrar a Notification of Suspension, which suspended the proceedings until July 25, 2010. On July 23, 2010, the Complainant requested that the proceedings be reinstituted via an e-mail to the Center on which the Respondent, but not the Respondent’s counsel, was copied. By e-mail response dated July 26, 2010 (on which the Respondent, but not the Respondent’s counsel, was again copied), the Center reinstituted the action and set July 31, 2010 as the due date for the Respondent’s Response.
On August 2, 2010, the Respondent’s counsel made his second request for an extension to file the Response. In the request, the Respondent’s counsel referenced the failure to copy him on the July 23 e-mail request for reinstatement of proceedings. Upon the Complainant’s consent, the Center granted the Respondent until August 9, 2010 to file his response. The Respondent failed to respond to the Complaint. Accordingly, on August 10, 2010, the Center issued a Notification of Respondent Default.
The Center appointed David H. Bernstein as the sole panelist in this matter on August 12, 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.
4. Factual Background
The Complainant B & H Foto & Electronics Corp. is a seller of photographic and video equipment with its principal place of business in New York, New York. The Complainant is the owner of the registered trademarks B & H, which was registered with the United States Patent and Trademark Office (“USPTO”) on March 2, 1999 (Reg. No. 2,229,004) and B & H PHOTO VIDEO PRO AUDIO (Reg. No. 2,230,867, registered with the USPTO on March 2, 1999). The Complainant has operated the website at “www.bhphotovideo.com” since October 1996 for sale and promotion of its products. It alleges it has invested several million dollars over the years to publicize the goods and services it sells under the marks B & H and B & H PHOTO VIDEO PRO AUDIO, as well as to promote its website, in order to ensure that potential purchasers of photographic and audio equipment identify the combination of the letters “B” and “H” with the Complainant.
The Complainant states in its amended Complaint that Joseph Gross, the Respondent, registered the Domain Name on or about January 15, 2002. (The Registrar, in its May 26, 2010 notice to the Center advising that Mr. Gross was the true registrant of the Domain Name, stated that it was unable to provide the date on which the Respondent registered or acquired the Domain Name “because it had privacy.”) The Domain Name automatically redirects to the URL “www.digitalphotographysuccess.com/?hopjoegross”. That website sells an e-magazine subscription and e-books that provide digital photography instruction.
On July 27, 2010, in response to a notification about these proceedings from the Center, Paul Roberts of Technical Support at “www.digitalphotographysuccess.com” e-mailed the Center. Mr. Roberts advised that he believed that the owner of the Domain Name had redirected traffic from the Domain Name to “www.digitalphotographysuccess.com” through an affiliate marketing entity known as ClickBank, using the following “HopLink” address: “www.digitalphotographysuccess.com/?hopjoegross”. The Panel infers from the appearance of the Respondent’s name in this URL that it is probable that the URL is designed to allow the Respondent to receive commissions when customers visit the Domain Name and ultimately, following redirection, purchase the products available on “www.digitalphotographysuccess.com”. See www.clickbank.com/help/affiliate-help/affiliate-basics/all-about-hoplinks/ (explaining use of HopLinks in facilitating affiliate commissions on customer purchases).
In his June 17, 2010 request for an extension of the time to respond, the Respondent’s counsel indicated that his client had been in negotiations with the Complainant to resolve the dispute over the Domain Name. The following day, the Complainant responded to this statement in an e-mail to the Center. The Complainant indicated in this e-mail that (i) following submission of the Complaint, the Respondent had requested a meeting with the Complainant to discuss the Domain Name; (ii) the Complainant had agreed to a June 2, 2010 meeting with the Respondent as a courtesy; (iii) at their June 2 meeting, the Respondent had told the Complainant that he had purchased the Domain Name for USD 20,000 with the intention to sell it to the Complainant along with a marketing plan; and (iv) the Complainant told the Respondent that it was not interested in this proposal and the meeting ended.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is identical or confusingly similar to its registered trademark B & H. It observes that an ampersand is an invalid character in the registration of a domain name (at least under current domain name protocols), and it asserts that the Respondent simply replaced the ampersand in its trademark with the word “and.”
The Complainant also alleges that the Respondent has no rights or legitimate interests in the Domain Name, in that (i) the Respondent is not authorized to use the Complainant’s trademark; (ii) there is no indication, from a review of the redirected website or otherwise, that the Respondent is known by or uses the name “bandh” in any capacity; and (iii) the redirection of the Domain Name to another website demonstrates the illegitimacy of the Respondent’s interest in the Domain Name.
The Complainant also asserts that the use of a confusingly similar variant of the Complainant’s well-known mark to draw traffic to “www.digitalphotographysuccess.com/?hopjoegross” supports a conclusion that the Respondent is endeavoring to mislead Internet users into the belief that there is an association between the Complainant’s mark and the photography-related materials offered for sale on the redirected site. The Complainant states that this effort to mislead Internet users is both indicative of the Respondent’s lack of any legitimate interest in the Domain Name, and of the Respondent’s bad faith in using and registering the Domain Name. Finally, the Complainant alleges that the Domain Name was registered and used in bad faith because the Respondent had either actual or constructive knowledge of the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions. In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(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 was registered and is being used in bad faith.
Despite the Respondent’s default, the Complainant must still support its assertions with actual evidence in order to succeed. Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”) Paragraph 4.6. For the reasons discussed below, the Panel concludes that the Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (acknowledging consensus on use of preponderance of the evidence standard).
A. Identical or Confusingly Similar
As noted above, the Complainant owns the trademark B & H as registered in March 1999 with the USPTO. Where a “complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.” WIPO Decision Overview at Paragraph 1.1. The only remaining question, then, is whether the Domain Name is identical or confusingly similar to the Complainant’s trademark. Last Minute Network Limited v. Web Domain Names, WIPO Case No. D2007-1161.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark in B & H. The alphanumeric string “bandh” is in fact nearly identical to that mark. An ampersand is not a valid character in a domain name, and its replacement with the word “and” does nothing to change the confusing similarity between the Domain Name and the Complainant’s mark. See Ernst & Young Global Limited v. Latin American Trade, WIPO Case No. D2009-0138; HRB Royalty, Inc. v. Pro-Life Domains Inc., WIPO Case No. D2003-1021. Accordingly, the Panel holds that the Complainant has met the requirement of paragraph 4(a)(1) of the Policy.
B. Rights or Legitimate Interests
The Panel has reviewed the record and the website to which the Domain Name resolves and finds that there is no indication of any legitimate interest by the Respondent in the Domain Name. No relationship to the term “bandh” can be identified on the site to which the Domain Name resolves.
It appears that the Respondent, for commercial gain, is seeking to confuse Internet users so that those searching for the Complainant will mistakenly reach the Domain Name and be redirected to make purchases on a digital photography-related site unrelated to the Complainant. This is an illegitimate commercial use of the Domain Name. Advance Magazine Publishers Inc. d/b/a Conde Nast Publications v. Rodney Rooney Productions Inc., WIPO Case No. D2009-0639 (use of a domain name that reflected trademark of a media company to redirect the public to a website that hosted content from a different media company indicated that registrant lacked rights or legitimate interests in the domain name).
C. Registered and Used in Bad Faith
The Panel concludes that the Domain Name was acquired, and is being used, in bad faith. According to the Complainant’s June 18, 2010 e-mail to the Center, the Respondent informed the Complainant at a June 2010 meeting that he purchased the Domain Name for the express purpose of reselling it to the Complainant. This fact (which the Respondent has not refuted) is alone substantial evidence of the Respondent’s bad faith. Under paragraph 4(b)(i) of the Policy, circumstances indicating that a registrant has acquired the domain name primarily for the purpose of selling it to the owner of the trademark “for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name” will evidence a bad faith registration and use.
Furthermore, the same facts that led the Panel to the finding that the Respondent lacked rights in the Domain Name also support a finding of bad faith registration and use. Paragraph 4(b)(iv) of the Policy considers the following use of a disputed domain name to be indicative of bad faith: the intentional attempt to attract, “for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site[.]”
It is apparent that the Respondent has redirected Internet users seeking to visit the Complainant’s site to an alternative site that similarly offers digital photography-related items for sale, and it appears that he has done so in the hope of earning commissions on purchases made pursuant to this redirection. See Advance Magazine Publishers Inc., supra (finding bad faith within the meaning of paragraph 4(b)(iv) where respondent used a variant on the Conde Nast mark in the disputed domain name to redirect hits to an unrelated website that also offered media content, in order to attract Internet users via a likelihood of confusion with the Conde Nast mark).
The Panel finds that the record provides a sufficient basis for concluding that the Respondent has 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 <bandh.com> be transferred to the Complainant.
David H. Bernstein
Dated: August 19, 2010