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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interbond Corporation of America d/b/a BrandsMart U.S.A. v. Adrian Nicolas

Case No. D2021-0735

1. The Parties

Complainant is Interbond Corporation of America d/b/a BrandsMart U.S.A., United States of America (“United States”), represented by VLP Law Group LLP, United States.

Respondent is Adrian Nicolas, United States.

2. The Domain Name and Registrar

The disputed domain name <brandsmartstore.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details

The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2021.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 19, 2021. 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

Complainant is one of the largest volume-per-store retailers of consumer electronics and household appliances in the United States. Complainant has been using the BRANDSMART U.S.A. trademark (“BRANDSMART Mark” or “Complainant’s Mark”) in connection with its retail sale services since 1977. Complainant owns multiple trademark registrations for its BRANDSMART Mark, including United States registration numbers 1,754,384 and 2,354,560 (respectively registered on February 23, 1993 and June 6, 2000). Complainant has also been advertising its products and services under the BRANDSMART Mark through its primary website located at the <brandsmartusa.com> domain name since 1995.

The disputed domain name <brandsmartstore.com> was registered by Respondent on September 13, 2020. It resolved to a website that closely mimicked Complainant’s primary website, made copious use of Complainant’s BRANDSMART Mark, and offered for sale the same goods and services.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it incorporates the BRANDSMART Mark almost entirely. The addition of the descriptive term “store” alongside Complainant’s Mark actually increases, rather than decreases, the potential risk of confusion, according to Complainant, because it reinforces the impression that the disputed domain name is connected with Complainant since Complainant’s Mark is used in connection with retail services.

Complainant further posits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way, and was never licensed or authorized to use Complainant’s Mark. Therefore, according to Complainant, it may be presumed that Respondent has no rights and legitimate interests to the disputed domain name. Furthermore, Complainant argues that Respondent’s use of the disputed domain name in connection with a website closely mimicking Complainant’s primary website cannot be considered a legitimate noncommercial or fair use nor any bona fide offering of goods or services.

Lastly, Complainant argues that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the BRANDSMART Mark since the disputed domain name almost fully incorporates Complainant’s Mark and resolves to a copycat website making copious use of Complainant’s Mark. According to Complainant, this demonstrates that Respondent was not only aware of Complainant’s rights in the BRANDSMART Mark but specifically targeted it as part of an attempt to deceive potential customers or employees of Complainant into believing that the disputed domain name’s website was owned or operated by Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

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

(iii) the disputed domain name was registered and is being used in bad faith.

Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the BRANDSMART Mark through its United States registrations.

With Complainant’s rights in the BRANDSMART Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

Here, the disputed domain name almost fully incorporates Complainant’s BRANDSMART Mark. The omission of the U.S.A. element of the mark, and the inclusion of the dictionary term “store” in the disputed domain name does nothing to prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8 (“[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s BRANDSMART Mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the BRANDSMART Mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s offering of goods and services under a trademark Respondent was not authorized or licensed to use and mimicking Complainant’s primary website cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” (quoting Ciccone v. Parisi, WIPO Case No. D2000-0847)). In this case, Respondent used the disputed domain name to direct Internet users to a website intended to mimic that of Complainant, apparently to try and ostensibly sell competing goods and services. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name.

Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

Among the circumstances panels take into account when assessing whether the respondent’s registration of a domain name is in bad faith are: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iii) the clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, and (iv) other indicia generally suggesting that the respondent had somehow targeted the complainant.

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations for the BRANDSMART Mark that long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the BRANDSMART trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Furthermore, the disputed domain name resolves to a website that made copious use of Complainant’s Mark, closely resembled the website located at Complainant’s primary domain name, <brandsmartusa.com>, and that advertised similar goods and services to those Complainant offers under the BRANDSMART Mark. This is clear evidence that Respondent not only knew about Complainant’s Mark but also actively targeted it for unfair exploitation. The Panel finds it likely that Respondent was engaging in a concerted effort to attract Internet users, for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraphs 4(b)(iv) of the Policy.

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 name, <brandsmartstore.com> be transferred to the Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: April 28, 2021

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