WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bambu, LLC v. Domains by Proxy, LLC/ Jamil Bouchareb
Case No. D2012-0902
1. The Parties
The Complainant is bambu, LLC of Mineola, New York, United States of America, represented by Bernstein Shur, United States.
The Respondents are Domains by Proxy LLC of Scottsdale, Arizona, United States and Jamil Bouchareb of Miami Beach, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <bambushop.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 30, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2012 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 6, 2012.
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 proceedings commenced on May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 6, 2012. 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 is a limited liability company organized under the laws of the State of Maine, United States, with offices in Mineola, New York, United States. The Complainant produces and sells housewares made of bamboo and other renewable materials, both online (through its website at “www.bambuhome.com”) and through retail chains. According to the Complaint, the Complainant has offered such products branded with a BAMBU mark since 2003. The Complainant operates a website at “www.bambuhome.com”.
The Complainant owns United States trademarks no. 2982914 (registered August 9, 2005 for the stylized word “bambu” along with other words and design), no. 3769879 (registered April 6, 2010 for the stylized word “bambu” and design), and no. 3281622 (registered August 21, 2007 for a stylized letter “b” and design). The Complainant also holds a United States trademark registration for VENEERWARE (no. 2874731, registered August 17, 2004), the relevance of which is discussed below.
Information about the Respondents is limited. No Response was submitted, and the Complainant inappropriately asserts several factual matters concerning the named Respondents “on information and belief.” The Complainant should be aware that the complaint in a UDRP administrative proceeding is normally the sole opportunity to present evidence. It is not a form of “notice pleading” as in American litigation, followed by evidentiary discovery and motions. The UDRP complainant must submit supporting evidence as contemplated in the Rules and argue for reasonable inferences from that evidence. The Panel cannot base a decision on facts asserted “on information and belief” but rather on the “statements and documents submitted” (Rules, paragraph 15(a)).
What is established on this record is that the Domain Name was created on July 30, 2010 and registered in the name of the domain privacy service associated with the Registrar, Domains by Proxy, LLC. In correspondence with the Center, the Registrar identified the actual registrant as the Respondent Mr. Bouchareb of Miami Beach, Florida, United States.
The amended Complaint also names another individual as a respondent, Mr. Rinella, the proprietor of RBG Plastic, LLC, d/b/a Restaurantware, of Chicago, Illinois, United States. The Complainant believes Mr. Rinella exercises some form of control over the website associated with the Domain Name. While there is evidence of an association between Mr. Rinella and Mr. Bouchareb, as discussed below, there is insufficient evidence in the record to establish Mr. Rinella’s precise interest in the Domain Name. Mr. Rinella has not come forward to assert such an interest, despite receiving correspondence concerning this dispute. The Registrar’s domain privacy service, which remains the registrant of record, also asserts no interest in the Domain Name and identifies Mr. Bouchareb as the “registrant”. Thus, the term “Respondent” as used hereafter in this decision refers to Mr. Bouchareb.
As evidenced by screenshots of the website associated with the Domain Name in October 2011, furnished with the Complaint, the Domain Name resolved at that time to a website headed “Bambushop” advertising bamboo dinnerware, with text promoting the ecological benefits of using such products. The heading was partly rendered in a color, font, and style similar to the Complainant’s design marks, with leaves sprouting from one of the letters, also similar to the Complainant’s marks. The links on this website redirected visitors to the website of “RW Restaurantware” (the “RW website”), on which disposable bamboo plates, skewers, and other tableware, including “Bambu Veneerware”, could be purchased. It is undisputed that “RW Restaurantware” is a competitor of the Complainant and does not distribute the Complainant’s BAMBU or VENEERWARE products under license or otherwise. The proprietor of “RW Restaurantware”, Mr. Rinella, is listed in state records as co-manager of two businesses with J. Bouchereb, which suggests a connection of some sort with the Respondent.
In response to a cease-and-desist letter from the Complainant’s counsel, Mr. Rinella reportedly suggested that the links to his RW website were automatically produced by “search engine optimization”. This is not credible, because the site associated with the Domain Name was not a typical advertising portal with numerous, software-generated links in various categories. It appears from the screenshots that the website displayed substantial text and photos concerning bamboo products and that the only links were to the RW website. Following the communications between the Complainant and Mr. Rinella, references to BAMBU dinnerware and VENEERWARE were removed from the RW website. The website associated with the Domain Name was also taken down, again suggesting that Mr. Rinella had some connection with the operation of that website. The Domain Name currently resolves to an “Account Suspended” message.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to the Complainant’s BAMBU marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent had actual and constructive knowledge of the Complainant’s marks and selected the Domain Name to mislead Internet users and exploit the reputation associated with its marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a 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.”
A. Identical or Confusingly Similar
The Complainant does not hold a registered standard-character trademark for the word “bambu”, and it has not presented sufficient evidence to establish unregistered, common-law rights in the word “bambu” as a trademark. The Complainant owns two registered design marks incorporating stylized representations of the word “bambu”.
According to the “Merriam-Webster” English dictionary and “Dictionary.com” entries on “bamboo”, “bambu” is a variant spelling of “bamboo,” from the Malay word for the bamboo family of tropical and subtropical grasses. The trademark database operated by the United States Patent and Trademark Office lists some 50 trademarks consisting of, or incorporating, the word “bambu” using the same spelling as found in the Complainant’s design marks. A generic word used in a design (or “device”) mark may not be sufficiently distinctive for Policy purposes (see, e.g., Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645). However, “bambu” is not the common spelling of the word in English and may be considered somewhat more distinctive.
The Complainant indisputably holds two registered trademarks incorporating its company name, “bambu”, The “bambu” portion of the mark is the most prominent feature in both. This name is repeated exactly in the Domain Name, which simply adds the word “shop”.1 This generic addition does not eliminate the likelihood of confusion with the distinctive portion of the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the BAMBU marks for purposes of the first element of the Policy, which is essentially a “low-threshold” standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and cases cited therein.
B. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to use a Domain Name incorporating or similar to the BAMBU marks. The Policy, paragraph 4(c), lists other circumstances demonstrating the respondent’s rights or legitimate interests in a 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 . . .”
There is no evidence in the record that the Respondent or a related business has been known by a similar name. The Domain Name was used to redirect visitors to a commercial website selling bamboo household products, but if this was done in an effort to mislead Internet users as to source or affiliation, that could not be considered use in connection with a “bona fide” commercial offering within the meaning of the Policy. See WIPO Overview 2.0, paragraph 2.2 and cases cited therein. That issue is discussed more fully below under the third element of the Complaint. As the Panel finds below that the Respondent is engaging in behavior which cannot be considered a bona fide offering of goods or services with the meaning of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name for purposes of the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of circumstances demonstrating bad faith registration and use of a domain name in paragraph 4(b) includes the following:
“(iv) by using the domain name, you have intentionally attempted 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 your web site or location or of a product or service on your web site or location.”
From the available record, and absent any plausible alternative explanation advanced by the Respondent, this appears to be the case in the current proceeding. The Complainant’s BAMBU marks were registered and established in the United States by the time the Domain Name was registered. The record shows that the Complainant’s products associated with those marks were sold nationally and appeared prominently in search engine results for “bambu” tableware. It is undisputed that RW Restaurantware competes directly with the Complainant in the sale of disposable bamboo tableware. “Bambu” is not the common spelling of the natural material used in these products, yet that spelling appears on the website formerly associated with the Domain Name and on the RW website to which it redirected visitors. Even more damning, the latter website also featured the words “Bambu Veneerware” in product descriptions, capitalizing and combining two of the Complainant’s marks.
Thus, it appears that the Respondent, or the business on whose behalf he registered and used the Domain Name, was aware of the Complainant’s BAMBU marks and targeted them with a confusingly similar Domain Name to mislead Internet users and redirect them to a competitor’s website. The Panel finds this constitutes bad faith for purposes of the third element of the Policy, as well as undermining any claim of rights or legitimate interests that the Respondent might conceivably have asserted in connection with the second element of the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bambushop.com> be transferred to the Complainant .
W. Scott Blackmer
Dated: June 21, 2012
1 The “www” and “.com” portions of the Domain Name required for URL addresses in the Domain Name System are not considered material for trademark or Policy purposes. See, e.g., United States Patent and Trademark Office, Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL ('http://www.') nor the TLD [top-level domain name, such as ‘.com’] have any source-indicating significance”); see also Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only ... , as it is well-established that the top-level domain names ... should be disregarded for this purpose”).