WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard

Case No. D2021-0609

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 Domain Administrator, See PrivacyGuardian.org, United States / Maryellen J Dillard, Maryellen Dillard, United States.

2. The Domain Names and Registrar

The disputed domain names <bombasy.shop> and <bombes.shop> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names and five other domain names. On March 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names and five other domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2021 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 involving only the Domain Names on April 19, 2021.

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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2021.

The Center appointed Ellen B Shankman as the sole panelist in this matter on June 3, 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.

The Registrar provided information regarding the identity of the registrant for both Domain Names, which revealed that they were identical. In light of the fact that that the registrant and registrar information for both of Domain Names are identical, and given the evidence that both Domain Names led to websites that concern the Complainant’s trademark, the Complainant reasonably understands that the Respondent for both Domain Names is the same person or entity. Accordingly, the Panel finds that the consolidation of the Domain Names to be determined by a single decision under the facts of this case to be fair and reasonable.

4. Factual Background

The dates of the Domain Names registrations were confirmed by the Registrar to be:

<bombasy.shop>, created on September 18, 2020.
<bombes.shop>, created on October 9, 2020.

The Complaint is a clothing manufacturer and retailer founded in 2013.

The Complainant provided evidence of multiple trademark registrations the BOMBAS mark in multiple jurisdictions, including, inter alia, United States Registration Nos. 4,492,577 and 5,359,406 for socks, registered on March 4, 2014 and December 19, 2017, respectively, and Registration No. 6,020,322 for an array of apparel, registered on March 24, 2020.

The Complainant provided evidence of screen shots of the website connected with the Domain Names that shows use of the Complainant’s marks and goods, which the Complainant contends are counterfeit.

The Panel also conducted an independent search to determine that the Domain Names currently resolve to pages with “error” messages, and the websites currently appear to be inactive.

5. Parties’ Contentions

A. Complainant

The Complaint contends that the Complainant is a clothing manufacturer and retailer founded in 2013. In particular, and since at least as early as 2013, the Complainant has been continuously and prominently using its trademarks BOMBAS and BOMBAS & Design (hereinafter the “BOMBAS Marks”) in connection with socks that are of superior quality due to two years of research and development. The Complainant’s business model is centered on its core mission to help the homeless by providing them with the most requested clothing item at homeless shelters – socks. For every pair of socks or other clothing item purchased by a customer, the Complainant donates a pair of socks or other clothing item to someone in need. Recently, the Complainant also began offering t-shirts, and expanded its charitable contributions to include one t-shirt donated for each t-shirt sold. Through this model, the Complainant has donated more than 40 million socks and other clothing items, including in the United States and Canada.

The Complainant is also the owner of the <bombas.com> domain name, which was registered on January 12, 2000 and purchased by the Complainant on July 2, 2014. On or around July 27, 2014, the Complainant began using the <bombas.com> domain name to promote and sell its BOMBAS branded socks.

The Complainant actively and prominently features the BOMBAS Marks in ongoing national and regional advertising and promotional campaigns. For example, in 2020, the Complainant spent tens of millions of dollars in sales and marketing, and had revenues in excess of that. The Complainant’s efforts and success have garnered a great deal of attention in the press, with the company and its business model being featured in various publications and news media, including The New York Times, Fast Company, CNN, Business Insider, The Daily Mail, and The Washington Post. As a result of the Complainant’s substantial investments in advertising, marketing, and promotion, its widespread and continuous use of the BOMBAS Marks since 2013, and the extensive publicity and news coverage surrounding Bombas, the Complainant has developed substantial rights and goodwill in the BOMBAS Marks, and the public has come to associate the BOMBAS Marks exclusively with Bombas as the source of Bombas’ well-regarded apparel products. Consequently, the Respondent had actual notice of the Complainant’s exclusive right to use the BOMBAS mark in the United States prior to creating the Domain Names.

The Complainant argues that the Domain Names are each substantially identical to Bombas’ BOMBAS Marks. The <bombasy.shop> Domain Name plainly incorporates the BOMBAS trademark in its entirety, merely adding a typo (“y”) to Bombas’ protected trademark that does nothing to differentiate it from the trademark. The <bombes.shop> Domain Name merely replaces the letter A with the phonetically similar letter “e”, a misspelling that falls firmly into the category of typosquatting that aims to attract customers who misspell or err in the typing of the domain address they seek. Accordingly, the Domain Names are identical or at least confusingly similar to the BOMBAS Marks.

Further, as the Respondent is using the Domain Names to sell counterfeit goods from a fraudulent website, the Respondent has no legitimate interest or rights in the Domain Names. The Respondent’s registration and use of the Domain Names is in bad faith because the Respondent had both constructive notice (based on the Complainant’s prior registrations for the BOMBAS Marks) and actual notice (based on the publicity and recognizability of the BOMBAS Marks), and is using images of Bombas’ products from the Bombas Website on its websites, making clear its awareness of the Complainant’s trademark.

The Respondent is not affiliated with Bombas in any way and does not have any business relationship with the Complainant. Further, the Complainant has not provided the Respondent with a license or otherwise authorized the Respondent to use the BOMBAS Marks or any other intellectual property belonging to the Complainant. Despite that, the Respondent registered the Domain Names and is using them for fraudulent recreations of the Bombas website, using the BOMBAS Marks and images of Bombas’ products to purport to sell counterfeit goods.

Given the Respondent’s fraudulent duplication of the Bombas Website to sell counterfeit goods, the Complainant argues that there can be no doubt that the Respondent intends to misappropriate the BOMBAS trademark in order to deceive consumers and draw an improper association with the Complainant. As the Respondent has no legitimate interest in misappropriating Bombas’ BOMBAS Marks, the Respondent is deliberately attempting to attract users by creating confusion with the BOMBAS Marks as to the source, sponsorship, affiliation or endorsement of the Domain Names. Further, Bombas’ customers and prospective customers are likely to be deceived into entering the Respondent’s website believing that they are dealing with Bombas or believing that the Domain Names are affiliated with or somehow endorsed by the Complainant, a deception only made more likely by the Respondent’s use of photographs of Bombas’ products. Accordingly, the Respondent’s registration and continued use of the Domain Names was, and continues to be, in bad faith.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark BOMBAS, in respect of clothing. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the letter “y” or the substitution of the letter “e” does not prevent a finding of confusing similarity. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for counterfeit goods. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Names registered by the Respondent 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 Domain Names; and
(iii) That the Domain Names have been registered and are being used in bad faith

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Names.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for BOMBAS.

Further, the Panel finds that the Domain Names are confusingly similar to the Complainant’s mark. The Panel finds that the mere addition of the letter “y” or the substitution of the letter “e” does not prevent the trademark of the Complainant from being recognizable in the Domain Names. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sections 1.7 and 1.8.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Names, does not have permission to use the BOMBAS Mark, and is not using the Domain Names for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Names. The Respondent has also used the Domain Names to sell counterfeit goods which is not a legitimate noncommercial purpose.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.

The Panel agrees with the Complainant’s argument that the Respondent knew about the Complainant and its goods. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). Such unauthorized use with prior knowledge is not legitimate.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark and uses them for deceptive purposes, including attempted sale of counterfeit goods and/or misleading and diverting Internet traffic, constituting bad faith.

By registering the confusingly similar Domain Names, together with the photos of the Complainant’s goods on the website, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO February 18, 2000). Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (WIPO December 10, 2007). The Panel agrees with the Complainant’s contention that indeed, Respondent’s purpose in registering the Domain Names was probably to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website, where similar goods had been published, and that the Respondent’s purpose in registering the Domain Names was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about or goods of the Complainant. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

A respondent’s use of a complainant’s mark - for said respondent’s commercial benefit - to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy 4(b)(iv). See WIPO Overview 3.0 at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”).

The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Names would be identical or confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.

The Panel also finds that even though the Domain Names currently resolve to inactive pages, this does not preclude a finding of registration and use in bad faith where: “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”(Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Further, the Panel finds that the registration of variations on the theme support a “pattern” of bad faith, and that doing so with the use of the privacy registrations for the Domain Names, only supports such inference. This is consistent with section 3.6 of the WIPO Overview 3.0, which states that:

“There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith.

In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements.

Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.”

In this case, no such inference was refuted by the Respondent.

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant, the evidence of photos previously posted on the websites, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Names <bombasy.shop> and <bombes.shop> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: June 9, 2021