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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interbond Corporation of America d/b/a BrandsMart U.S.A. v. Domain May be for Sale, Check Afternic.Com Domain Admin, Whois Foundation

Case No. D2018-2226

1. The Parties

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

The Respondent is Domain May be for Sale, Check Afternic.com Domain Admin, Whois Foundation of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <brandmartusa.com> (the “Domain Name”) is registered with NameKing.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2018, 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.

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 the Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2018.

The Center appointed Jane Seager as the sole panelist in this matter on November 13, 2018. 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 nationally and internationally recognized award-winning consumer electronics retailer and is one of the largest volume-per-store retailers in the United States. It opened its first store in 1977.

In addition to its various retail stores, the Complainant operates an online store at “www.brandsmartusa.com” and “www.brandsmart.com” (the corresponding domain names were registered in 1995).

The Complainant has registered trademark rights in the term BRANDSMART U.S.A., including but not limited to:

- United States trademark No. 1,754,384, for the Word Mark BRANDSMART U.S.A., first used on May 1, 1982, filed on June 15, 1992, and issued on February 23, 1993 (class 42);

- United States trademark No. 2,354,560, for Design Mark BRANDSMART U.S.A., first used on June 1, 1986, filed on July 9, 1998, and issued on June 6, 2000 (class 35); and

- Argentinian trademark No. 1,782,272, for the Design Mark BRANDSMART U.S.A., filed March 25, 2010 (class 35).

The Domain Name was registered on November 7, 2002. At the time the Complaint was filed, it was pointing to a website containing sponsored links, some of which refer to consumer electronics and computers, and a link to the Sedo website offering the Domain Name for sale for USD 9,000.

5. Parties’ Contentions

A. Complainant

Turning to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is confusingly similar to the Complainant’s trademark

The Complainant asserts that its valid registrations of the BRANDSMART U.S.A. mark (for example USTPO Reg. No. 1,754,384, registered on February 23, 1993, claiming first use in commerce on May 1, 1982 for retail store services for certain consumer electronics and household appliances) demonstrate that the Complainant has rights in the term BRANDSMART U.S.A.. In addition, the Complainant argues that it is not required, under the Policy paragraph 4(a)(i), to register its mark in the country of the Respondent’s residence.

The Complainant claims that the Domain Name is confusingly similar to the Complainant’s BRANDSMART U.S.A. mark because the only difference between the Complainant’s BRANDSMART U.S.A. mark and the Domain Name is the Respondent’s deletion of the letter “s” from the BRANDSMART U.S.A. mark. This minor difference is insufficient to avoid a finding of confusing similarity between the Complainant’s BRANDSMART U.S.A. mark and the Domain Name under the Policy, paragraph 4(a)(i).

Furthermore, the Complainant argues that it also has common law rights in the BRANDSMART U.S.A. mark, dating from 1977, by virtue of its long and continuous use of the mark in commerce and its extensive advertising and promotion of the mark, all of which have created secondary meaning in it sufficient to create such rights.

(ii) The Respondent has no rights or legitimate interests in the Domain Name

The Complainant also states that the Respondent has no rights or legitimate interests in the Domain Name and is not commonly known by the Domain Name. The Complainant adds that it has not authorized, consented to or licensed the Respondent’s use of the BRANDSMART U.S.A. mark, nor can the Respondent’s use of the Domain Name to operate a parked commercial website competing with the Complainant for profit be considered use in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

In addition, the Complainant contends that the Respondent has used the Domain Name in connection with a phishing website for the Respondent's commercial gain. In support of this contention, the Complainant has submitted a signed declaration by a person qualified to substantiate the software process used to generate a phishing notice.

(iii) The Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondent, acting in bad faith, has registered and is using the Domain Name to confuse and deceive consumers and divert Internet traffic from the Complainant to the Respondent’s parked website for commercial profit. The Respondent’s registration and use of the Domain Name to maintain a parked website infringing the Complainant’s BRANDSMART U.S.A. mark falls squarely within the cybersquatting misconduct that the Policy was established to remedy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:

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

(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.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks matching or including the term BRANDSMART U.S.A., for example United States Registration No. 1,754,384, first used on May 1, 1982, filed on June 15, 1992 and issued on February 23, 1993 in class 42.

As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trademark. In this regard, the Panel notes that the Domain Name fully incorporates the Complainant’s BRANDSMART U.S.A. mark, apart from the first letter “s”. The Panel agrees with the Complainant that such variation is insufficient to avoid confusion with the Complainant’s trademark.

Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

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

Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name, a clear misspelling of the Complainant’s trademark, is pointing to a website containing sponsored links relating to the Complainant’s business. Neither can such use be said to be a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) as commercial gain is clearly being made. Furthermore, the Complainant has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant’s trademark and the fact that the Domain Name is a misspelling of it.

The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The evidence put forward by the Complainant amply demonstrates the Complainant’s notoriety and the extensive use of its trademarks, certain of which pre-date the registration of the Domain Name. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant’s rights. The Panel is not persuaded that “brandmartusa” has any distinct meaning, other than as a misspelling of “brandsmartusa”, corresponding to the Complainant’s BRANDSMART U.S.A. mark and the Complainant’s website available at “www.brandsmartusa.com”. Under the circumstances, the Panel is of the opinion that the Domain Name was registered for its trademark value, albeit misspelled, and not in relation to any ordinary dictionary meaning.

The Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has reviewed the website to which the Domain Name is pointing and clicked on the link saying that it may be for sale. The Panel was directed to the Sedo website where the Domain Name is being offered for sale for USD 9,000. Given this, the Panel finds that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name in accordance with paragraph 4(b)(i) of the Policy.

The Panel further finds that the Respondent’s use of the Domain Name, which incorporates the Complainant’s trademark in its entirety except for the omission of the first letter “s”, for a parking page containing sponsored links, including links related to the Complainant’s field of business is, under the circumstances, evidence of bad faith use. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see paragraph 3.5 of the WIPO Overview 3.0). The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) 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 Domain Name <brandmartusa.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: November 27, 2018

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