WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BombBomb, LLC v. Jan Everno, The Management Group II
Case No. D2020-1393
1. The Parties
The Complainant is BombBomb, LLC, United States of America (“United States”), represented by Adsero IP, United States.
The Respondent is Jan Everno, The Management Group II, United States.
2. The Domain Name and Registrar
The disputed domain name <bombomb.com> (the “Disputed Domain Name”) is registered with Magnate Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 2020, 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 June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 29, 2020. 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 company in the United States known for its electronic communications, video email, and real estate, mortgage and business marketing, and communications services. The Complainant has been operating since November 2006. The Complainant is the owner of BOMBBOMB, a registered trademark in the United States Patent and Trademark Office (“USPTO”), United States Registration No. 4681458, registered on February 3, 2015, in international class 42, with a date of first use of September 12, 2007 (the “BOMBBOMB Mark”). The Complainant owns the domain name <bombbomb.com>, which resolves to its official website at “www.bombbomb.com”.
The Disputed Domain Name was registered on March 15, 2017, and resolves to a landing page containing a security check. The user is required to click on the security check button before being able to access the redirected infringing website.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
- the Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name resolves to page with a security check that attempts to install additional software in the user’s web browser. The practice of accessing and modifying a web browser’s settings without the user’s permission or ability to bypass the installation is commonly referred to as “browser hijacking”. Such browser modifications are at times intended to place unwanted advertising in the browser, often containing spyware for purposes of obtaining banking, personal, or other sensitive data.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed 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 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 consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the BOMBBOMB Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the BOMBBOMB Mark based on its years of use and its registered trademark for the BOMBBOMB Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the BOMBBOMB Mark.
The Disputed Domain Name <bombomb.com> consists of a misspelling of the BOMBBOMB Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. Here, the deletion of the letter “b” in the Disputed Domain Name does not prevent a finding of confusing similarity between the BOMBBOMB Mark and the Disputed Domain Name. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” or “typo-piracy”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BOMBBOMB Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a landing page that includes a security check allegedly containing spyware, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Second, the Respondent’s registration of the Disputed Domain Name that contains a misspelling of the BOMBBOMB Mark in an effort to take advantage of such typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773.
Finally, the Respondent has demonstrated a pattern of bad acts in an attempt to prevent trademark owners from reflecting their trademarks in a corresponding domain name. See Michael Patrick Lynch v. Steve Nicol (Stephen Joel Nicol), WIPO Case No. D2015-0933. In support of this claim, the Complainant provides a report listing prior UDRP proceedings in which the Respondent in this proceeding was the respondent in eight other proceedings, many of which also involved typosquatting. In all of those listed cases, the domain names were ordered transferred from the respondent to the complainant. Thus, the Panel concludes that the Respondent's conduct in this case constitutes bad faith registration and use of the Disputed Domain Name within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <bombomb.com> be transferred to the Complainant.
Lynda M. Braun
Date: July 1, 2020