WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bombas LLC v. silo5x silo5x
Case No. D2021-1447
1. The Parties
The Complainant is Bombas LLC, United States of America, represented by Frankfurt Kurnit Klein & Selz, PC, United States of America.
The Respondent is silo5x silo5x, United States of America (“U.S.” or “United States”).
2. The Domain Names and Registrar
The disputed domain names <bombasonline.shop> and <bombassale.shop> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 11, 2021, 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 May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on June 25, 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
The Complainant is a clothing manufacturer and retailer founded in 2013 that has spent tens of millions of U.S. dollars marketing its products.
The Complainant is the owner of the <bombas.com> domain name which since 2014 has been continuously used to promote and sell the Complainant’s products.
The Complainant owns several registrations for the mark BOMBAS (the “Mark”) including but not limited to United States Patent and Trademark Office Registrations Nos. 4,492,577 and 5,359,406 for goods and services in class 25, registered on March 4, 2014, and December 19, 2017, respectively, and Registration No. 6,020,322 for goods and services in classes 10 and 25 registered on March 24, 2020.
The disputed domain names <bombasonline.shop> and <bombassale.shop> were registered on November 12, 2020.
5. Parties’ Contentions
The Complainant asserts the two disputed domain names are confusingly similar to the Mark because the disputed domain names entirely incorporate the Complainant’s Mark and merely add the dictionary terms “online” and “sale” as a suffix to the Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain names, that the Respondent is not generally known by the disputed domain names, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain names. The Complainant asserts that the Respondent registered and used the disputed domain names in bad faith to lure unsuspecting Internet users to its websites offering for sale competitive, if not counterfeit, products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain names are 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 names; and,
(iii) the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s Mark.
The disputed domain names are composed entirely of the Complainant’s Mark with the addition of either the word “online” or “sale.” A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable and a predominant part of the disputed domain names notwithstanding the addition of dictionary or generic terms. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard, WIPO Case No. D2021-0609 (transferring <bombasy.shop> and <bombes.shop>); See also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The generic Top-Level Domain of the disputed domain names, in this case “.shop”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>).
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain names or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names or is commonly known by the disputed domain names. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names. Furthermore, the nature of the disputed domain names, being nearly identical to the Mark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1. Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.
2. The Panel finds the disputed domain names were registered and are being used in bad faith.
(i) A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Mark is not a common or descriptive term for clothing or socks. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering and deploying the disputed domain names for a website featuring competitive clothing products. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. (Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419). However, the evidence submitted by the Complainant is much stronger. When the Complaint was filed, the Respondent’s websites utilizing the disputed domain names were commercial sites offering competitive, if not counterfeit, goods for sale. Screenshots of the Respondent’s webpages attached as Annexes to the Complaint demonstrate that the Respondent was offering look-alike products for sale in competition with the Complainant utilizing the Complainant’s Mark on the Respondent’s websites.
(ii) Moreover, it is difficult to conceive of any use that the Respondent might make of the disputed domain names without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>.
(iii) That the disputed domain names do not currently resolve to an active website does not prevent a finding of bad faith under the circumstances of this case and the doctrine of passive holding. See WIPO Overview 3.0, section 3.3 and section 3.2.1. In fact, the current passive holding of the disputed domain names is further evidence of bad faith registration and use.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 names <bombasonline.shop> and <bombassale.shop> be transferred to the Complainant.
William F. Hamilton
Date: July 9, 2021