Complainant is Bombas LLC, United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
Respondent is silogmc, siologmc silogmc, United States.
The disputed domain names <bombaoutlet.shop> and <bombasforever.shop> are registered with NameSilo, LLC (the “Registrar”).
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 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 18, 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.
Complainant is a clothing manufacturer and retailer based in the United States. Complainant has been offering its clothing and related services under the BOMBAS mark since 2013. In this regard, Complainant is the owner of several trademark registrations for its BOMBAS mark in word form or as a composite word and design. These include United States Registration Nos. 4492577 (registered March 4, 2014) and 5359406 (registered December 19, 2017).
Complainant additionally owns the registration for the domain name <bombas.com> (registered 2014). Complainant uses the URL associated with this domain name to connect to a website through which Complainant offers information and products to prospective consumers.
The disputed domain names <bombaoutlet.shop> and <bombasforever.shop> were registered on November 18, 2020. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain names to offer the same or similar products as those offered by Complainant under its BOMBAS mark.
Complainant contends that the (i) disputed domain names <bombaoutlet.shop> and <bombasforever.shop> are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain names in bad faith.
In particular, Complainant contends that it has a strong reputation among consumers, and that it owns registrations for the BOMBAS mark. Complainant further contends that its BOMBAS products and services are well-known in the United States, where Respondent lists an address of record. In this regard, Complainant asserts that it has undertaken extensive advertising and marketing, and that its BOMBAS products and services have been featured in major media outlets.
Complainant contends that Respondent has incorporated Complainant’s BOMBAS mark, or the dominant portion of it, into the disputed domain names, and merely added the dictionary terms “outlet” or “forever”, which is likely to confuse prospective online consumers into thinking that the disputed domain names are affiliated with, or endorsed, by Complainant, and Complainant’s clothing products and services. Complainant contends that Respondent has no rights or legitimate interests in the registration and use of the disputed domain names. Rather, Complainant contends that Respondent has acted in bad faith in using the disputed domain names to offer the same or similar products as those offered by Complainant under its BOMBAS mark, in a bad faith manner, for Respondent’s own commercial gain.
Respondent did not reply to Complainant’s contentions.
This Panel must first determine whether the disputed domain names <bombaoutlet.shop> and <bombasforever.shop> are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The disputed domain names directly incorporate Complainant’s registered trademark BOMBAS, or the dominant portion “BOMBA” and merely add the dictionary terms “outlet” or “forever”.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with added words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
As for the slightly modified term “BOMBA” in the disputed domain name <bombaoutlet.com>, the mere deletion of the letter “s” to a registered trademark has been found by UDRP panels to be a common, and illicit, form of typosquatting that does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (transferring <extendedstaysamerica.com>; Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (transferring <crowntrophies.com>); Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336 (transferring <halcyonyarns.com>).
The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has set up the URL associated with the disputed domain names, offering the same or similar goods and services as those offered by Complainant under its established BOMBAS mark. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names, which Respondent has not rebutted.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in section 4 of this Panel’s decision, Respondent has used the URL associated with the disputed domain names to offer the same or similar products as those offered by Complainant under its BOMBAS mark.
Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the website and the disputed domain names, which incorporate Complainant’s mark or a close approximation thereof, the Panel finds sufficient evidence that Respondent registered and used the disputed domain names with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s clothing and related services offered by Complainant under its established BOMBAS mark.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
For all 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 <bombaoutlet.shop> and <bombasforever.shop> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: June 30, 2021