World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J.D. Future Enterprises, Inc. v. NetCentrix Domain Leasing

Case No. D2013-0239

1. The Parties

The Complainant is J.D. Future Enterprises, Inc. of Aventura, Florida, United States of America, represented by Law Office of Bradley Gross, P.A., United States of America.

The Respondent is NetCentrix Domain Leasing of Johnsonville, Wellington, New Zealand.

2. The Domain Name and Registrar

The disputed domain names <bluedoginks.com> and <bluedogtoner.com> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on February 7 and 8, 2013.

The Center verified that the Complaint together with the amendments to the 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 February 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 8, 2013. 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 corporation registered in Florida, United States (“U.S.”).

The Complainant is the proprietor of US registered trade mark number 4201699 for BLUEDOGINK registered on September 4, 2012, in International Class 35 for goods and services including online retail store services for printer-related equipment including computer printer ink and computer printer toner.

The domain name <bluedoginks.com> was registered on November 6, 2006.

The domain name <bluedogtoner.com> was registered on October 7, 2009.

Both the disputed domain names have been used to link to websites offering goods including printer ink and printer toner for sale online.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant relies primarily on the United States registered trademark referred to above.

The Complainant also submits that it has used the trademark BLUEDOGINK in commerce since 2005. It presents evidence that it has operated a website at ‘’www.bluedogink.com’’, selling printer ink and related products by reference to the mark BLUEDOGINK since at least December 2005. The Complainant claims that its mark BLUEDOGINK has also received national exposure on a number of review websites and provides printouts of such reviews. The Complainant states that it has over 30,000 customers in the United States and has fulfilled orders worth hundreds of thousands of dollars from those customers.

The Complainant submits that (ignoring the gTLD “.com”) the disputed domain name <bluedoginks.com> differs from the Complainant’s trademark only by the additional of the letter “s”. So far as the disputed domain name <bluedogtoner.com> is concerned, this differs only by the substitution of the term “toner” for “ink”. Since these terms are used interchangeably by purchasing consumers, it is clear that the disputed domain names are deliberately confusingly similar to the Complainant’s trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).

The Complainant submits an affidavit of its President, Justin Omanoff, who states that the Complainant has never authorised the Respondent to use its mark BLUEDOGINK.

The Complainant submits that the Respondent started to use both the disputed domain names for the sale of printer-related products in or about February 2011, almost seven years after the inception of the Complainant’s own online store. The Complainant states that it has found no evidence of any use of the disputed domain names for websites before that date. The Complainant also submits evidence that each of the disputed domain names has at some time resolved to a website at ‘’www.onlinesupplystore.com’’, which the Complainant states is a competitor of the Complainant.

The Complainant states that none of the websites to which the disputed domain names have resolved has used the name BLUEDOGINK, which they would do if the Respondent believed it had any legitimate right to use that name. While the Respondent has used a “Blue Dog Toner” logo, on the ‘’www.bluedoginks.com’’ website, it has used only the name “OnlineSupplyStore” in connection with the ‘’www.bluedogtoner.com’’ website.

The Complainant submits evidence of communications with the Respondent commencing with a “cease and desist” letter dated December 8, 2011. In the course of those communications the Respondent asked for evidence of the Complainant’s trademark rights, stated that there were a number of trademark registrations including the term “bluedog” but seemingly none for ink or toner, and pointed out that the disputed domain names had been registered since 2006 and 2009 respectively. In the Complainant’s submission, none of these responses amounted to an affirmative case that the Respondent had any rights or legitimate interests in respect of the disputed domain names. While the Respondent stated that it was “escalating” the matter internally, and the Complainant sent a further “cease and desist” letter dated September 13, 2012, it did not hear from the Respondent again.

The Complainant submits that the disputed domain names were registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant repeats its submission that the Respondent has no rights or legitimate interests in either of the disputed domain names.

The Complainant refers to the Respondent’s choice of the two disputed domain names. It points out that its own trademark, BLUEDOGINK, is “arbitrary and fanciful” and used uniquely by the Complainant for the sale of printer-related products. It submits that, in the circumstances, the Respondent’s choice of two confusingly similar names for the sale of similar products can only be construed as a deliberate attempt to feed off the Complainant’s goodwill.

The Complainant also states that during the course of 2011 it received complaints from customers about orders apparently not being fulfilled and received at least 11 complaints from customers or potential customers who had visited one of the Respondent’s websites believing it to be the Complainant’s. Thus not only do the disputed domain names have the potential for confusion, but they have clearly caused actual confusion in that the customers who believed they were dealing with the Complainant unintentionally placed orders with the Respondent.

The Complainant also submits that the Respondent has purchased the Google AdWord “bluedogink”, i.e. a name identical to the Complainant’s trademark, and has used it to promote the Respondent’s websites. As a result the Respondent’s website at ‘’www.bluedoginks.com’’ has received a higher search engine ranking than the Complainant’s own site, even though the Respondent has no legitimate interest in the trademark BLUEDOGINK and does not use this term anywhere on its website.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the domain names have been registered and are being used in bad faith.

Even in a case such as this, where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements.

A. Identical or Confusingly Similar

The Complainant is the owner of United States registered trademark number 4201699 for BLUEDOGINK registered on September 4, 2012, in International Class 35 for goods and services including online retail store services for printer-related equipment including computer printer ink and computer printer toner.

While the trademark was registered after the date of registration of both the disputed domain names, that does not prevent the Complainant from relying on the registered mark for the purposes of paragraph 4(a)(i) of the Policy. (It may, however, be a relevant factor in considering the question of bad faith.)

The Complainant also relies on unregistered trademark rights, i.e. its use of the mark BLUEDOGINK for the sale of printer-related products since 2005. The Panel accepts the Complainant’s evidence that it has made substantial sales of such products under that trademark from its website at ‘’www.bluedogink.com’’ since that date, and that the Complainant has unregistered rights in the trademark as a result.

The disputed domain name <bluedoginks.com> is identical to the Complainant’s trademark BLUEDOGINK save for the additional letter “s” and the gTLD “.com”. The disputed domain name <bluedogtoner.com> comprises the term “bluedog” together with the term “toner”. The Panel finds that the term “bluedog” is the distinctive part of the Complainant’s trademark BLUEDOGINK and that the term “toner” is descriptive. In the view of the Panel the addition of the term “toner” to the term “bluedog” does not serve to distinguish the domain name from the Complainant’s trademark. On the contrary, it adds to the potential for confusion because the term “toner” is descriptive of one of the categories of products for which the Complainant’s trademark is both registered and known.

In the circumstances, the Panel finds that both the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s evidence that it has never authorised the Respondent to use its trademark BLUEDOGINK.

The Panel notes from the material exhibited by the Complainant that the Respondent replied to the Complainant’s original “cease and desist” letter by an email dated December 8, 2011, which stated:

“Can you send details on the TM. We do not see it in our TM search, we search for trademarks before be [sic] lease out or buy a domain. BlueDogToner.com has been around since 2009 and BlueDogInks.com has been around since 2006.”

The implication is that the Respondent was entitled to register domain names which did not correspond to an existing trademark and that the Respondent did so in this case, some years ago. However, the Panel has accepted that the Complainant had used the trademark BLUEDOGINK for the sale of printer-related products since 2005, although the mark was not registered until 2012. The Complainant has also submitted, and the Respondent has not denied, that the Respondent only started to use the disputed domain names for the sale of printer-related products in 2011. Further, the Complainant submits that the Respondent is not genuinely trading under the names “Blue Dog Inks” or “Blue Dog Toner” and that the real identity of its business is “OnlineSupplyStore”. The Complainant says that this business is a competitor of the Complainant and that the Respondent has deliberately chosen to use the disputed domain names with the intention of confusing the Complainant’s customers. While noting that there is some use by the Respondent of a “Blue Dog Toner” logo, albeit on the ‘’www.bluedoginks.com’’ website, the Panel agrees that the inference suggested by the Complainant can fairly be drawn from the Respondent’s use of the disputed domain names, and that such use would not give rise to rights or legitimate interests in respect of the disputed domain names.

In the circumstances, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, although that prima facie case may be rebutted by the Respondent or by other evidence available to the Panel.

Although it responded to the Complainant’s “cease and desist” letter, the Respondent has chosen not to participate in the present proceedings and has not made any submissions as to why it may have any rights or legitimate interests in the disputed domain names. While the mere registration of domain names is not sufficient to establish rights or legitimate interests, it was open to the Respondent to submit, for example, evidence of any of the circumstances set out in paragraph 4(c) of the Policy, which may have demonstrated that it had such rights or legitimate interests. However, the Respondent has made no such submissions and no other evidence of such circumstances appears from the material available to the Panel.

In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant relies on the same factual matters as under “rights or legitimate interests”. In particular, it submits that the Respondent has adopted the Complainant’s “arbitrary and fanciful” trademark BLUEDOGINK to direct Internet users to websites which compete with the Complainant. The Complainant argues that this can not be coincidental and represents an attempt by the Respondent improperly to feed off the Complainant’s goodwill.

The Complainant also points to the fact that, since the Respondent started using the disputed domain names for similar products in 2011, it has received numerous complaints from customers who have placed orders on the Respondent’s websites mistakenly believing that they were dealing with the Complainant. This, the Complainant says, evidences actual confusion caused by the Respondent’s actions and not only the likelihood of confusion.

The Complainant also refers to its limited correspondence with the Respondent and argues that the Respondent’s failure to follow through on that correspondence also evidences bad faith.

The Panel accepts the Complainant’s submissions in this regard. Under paragraph 4(b)(iv) of the Policy, it shall be evidence of bad faith if, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location. The Panel concludes that the Respondent has done so in this case.

While the Respondent appears not to have used the disputed domain names for the purposes referred to above until 2011, the fact that a domain name has been held “passively” does not prevent a finding of bad faith and every case must be reviewed on its particular facts. Here the Panel has accepted that the Complainant started using its trademark BLUEDOGINK for the sale of printer ink and related products in 2005, before the registration of either of the disputed domain names. Having already concluded above that the Complainant possessed unregistered trademark rights prior to the registration of the disputed domain names, the Panel finds on balance that the Respondent was more likely than not to have had the Complainant and its business in mind at that time. Furthermore, the Respondent has declined to participate in these proceedings and, therefore, to take the opportunity to provide any explanation for its choice of the disputed domain names at the date of registration.

In the circumstances, the Panel finds that that the domain names have been registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bluedoginks.com> and <bluedogtoner.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: March 13, 2013

 

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