WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bombas LLC v. Contact Privacy Inc. Customer 0155130506 / Mark Hernandez, Bombas Clothing
Case No. D2019-2685
1. The Parties
The Complainant is Bombas LLC, United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
The Respondent is Contact Privacy Inc. Customer 0155130506, Canada / Mark Hernandez, Bombas Clothing, United States.
2. The Domain Name and Registrar
The disputed domain name <bombasclothing.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2019. On November 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2019, 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 November 8, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 18, 2019. 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 clothing manufacturer and retailer. It uses the trademark BOMBAS for the sale of socks and other clothing, and owns registrations for that mark, including United States Reg. Nos. 4,492,577 and 5,359,406, registered on March 4, 2014, and December 19, 2017, respectively. The Respondent registered the disputed domain name on July 4, 2019, and has used the disputed domain name to sell the same types of products sold by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant owns registrations for the BOMBAS mark that predate the registration of the disputed domain name. The disputed domain name incorporates the BOMBAS mark in its entirety – this is sufficient here to establish confusing similarity. The presence of the additional dictionary word “clothing” does not prevent a finding of confusing similarity.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts that:
- The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant.
- The Complainant has not provided the Respondent with a license or otherwise authorized the Respondent to use the BOMBAS trademark.
- The Respondent is not using the disputed domain name for a bona fide use – instead it uses it to sell goods that compete with the Complainant’s goods.
- There is no information to suggest that Respondent has become commonly known as BOMBAS.
- The Respondent has not used the disputed domain name for a legitimate noncommercial or fair use.
These facts establish the Complainant’s prima facie showing. The Response does not introduce evidence or argument to rebut this prima facie showing. The Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondent registered the disputed domain name for commercial gain or otherwise to interfere in the business of the Complainant, and to trade on the Complainant’s goodwill and reputation. By using the disputed domain name to set up and operate a website that appears to infringe on the Complainant’s trademark rights (i.e., by selling goods competitive to those of the Complainant), the Respondent has used the disputed domain name in bad faith. For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <bombasclothing.com> be transferred to the Complainant.
Evan D. Brown
Date: January 1, 2020