The Complainant is BYLT Performance LLC, United States of America (“United States”), represented by Law Offices of Neil Burstein, United States.
The Respondent is Grant Vollmer, BYLT, United States, represented by Lauson & Associates, United States.
The disputed domain name <byltbasics.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2019, providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 12, 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 August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. On August 19, 2019, the due date for response was extended with the Complainant’s confirmation until September 20, 2019. The Response was filed with the Center on September 20, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 3, 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.
The Complainant is a Florida limited liability company based in Port Saint Lucie, Florida, United States. According to the Complaint, the Complainant or its predecessors have been selling sports drinks and nutritional supplements under the B.Y.L.T. mark since September 2014 through online and retail channels and at trade shows “throughout the United States”. The Complainant has also sold t-shirts with the B.Y.L.T. mark since September 2015 online and at trade shows. The Complainant operates a website at “www.drinkbylt.com”. The Complainant’s logo on the website indicates that the B.Y.L.T. trademark is an acronym for “Beyond Your Limit Training”, a slogan followed by the “TM” symbol indicating the assertion of common law trademark rights.
The Complainant holds United States Trademark Registrations Numbers 4810314 (registered September 8, 2015) and 5110265 (registered December 27, 2016) for B.Y.L.T. as a standard character trademark. The Complainant states that the mark has been advertised online and in trade shows, attaching screenshots of two 2019 promotions.
The Registrar reports that the Domain Name was created on January 24, 2017, and is registered in the name of the Respondent Mr. Vollmer, showing the registrant organization as the Respondent “BYLT”, with a postal address in Irvine, California, United States. The Response states that the Respondent BYLT, LLC, currently owns the Domain Name but cannot update the Registrar’s WhoIs record because of the registration lock imposed until this UDRP proceeding is resolved. The online database operated by the California Secretary of State lists BYLT, LLC, as a California limited liability company registered on July 20, 2019. However, court papers attached to the Response state that the company has been in business since August 2016, selling men’s apparel under the marks BYLT and BYLT BASICS. Mr. Vollmer’s Linkedin social media profile names him as a “co-founder” of “BYLT Basics” in August 2016, and involved with the company until April 2018. Mr. Vollmer is not mentioned in the Response (beyond the caption) or in the court papers attached to the Response, but he remains the registrant of record for the Domain Name. Consequently, BYLT, LLC, and Mr. Vollmer will be referred to collectively hereafter as the “Respondent”.
The Domain Name resolves to the Respondent’s website headed “BYLT”, followed by the “TM” symbol indicating common law trademark claims. It is a fully developed e-commerce website advertising and selling the Respondent’s clothing and accessories for men and women, with links to the Respondent’s Facebook and Instagram social media pages. The Panel notes that the Internet Archive’s Wayback Machine stores screenshots of the Respondent’s website in substantially the same form as early as October 24, 2017.
The Respondent applied to register BYLT as a standard character trademark on May 8, 2018, United States Serial Number 87912445, claiming first use in commerce on August 1, 2016. The United States Patent and Trademark Office (“USPTO”) published the application for opposition on October 2, 2018. The Complainant has opposed the application, which remains pending.
In September 2018, the Complainant sent the Respondent a cease-and-desist letter alleging infringement of the Complainant’s B.Y.L.T. mark (without mentioning the Domain Name). The Respondent filed a complaint in federal court seeking a declaratory judgment of non-infringement, BYLT, LLC v. BYLT Performance, LLC, et al., Case No. 8:18-cv-02194 (USDC CD Cal, December 11, 2018). The Complainant has filed counterclaims in that proceeding, again without seeking transfer of the Domain Name as a remedy.
The Complainant asserts that the Domain Name is confusingly similar to its registered B.Y.L.T. trademark, incorporating it entirely and merely adding the descriptive term “basics”. The Complainant argues that the Respondent had no rights or legitimate interests in the Domain Name because it was created after the Complainant established and registered a strong, distinctive trademark that is not based on a descriptive term.
According to the Complainant, the Respondent “knew or should reasonably have known” of the Complainant’s mark, as a “simple online screening search” would have revealed the Complainant’s trademark registrations. Hence, the Complainant infers that the Respondent must have registered and used the Domain Name in bad faith, in an effort to misdirect Internet users for commercial gain.
The Respondent contends that the Domain Name and associated website, taken together, are not misleading or confusingly similar to the Complainant’s mark. The parties are in different businesses, and the Respondent was unaware of the Complainant until this dispute arose. The Respondent selected “bylt” as “a clever way of referring to a person’s ‘built’ body image or otherwise athletic or attractive physique, and ‘basics’ being generic for common clothing articles.” The Respondent contends that it has been selling clothing branded with this name through the website associated with the Domain Name since 2017 and never intended to trade on the Complainant’s reputation in sports drinks and nutritional supplements.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The Respondent argues that this UDRP proceeding should be “dismissed or stayed” in consideration of the federal court proceeding described above, in which the Respondent seeks a declaratory judgment that it is not infringing the Complainant’s B.Y.L.T. trademark (and the Complainant counterclaims for damages and an order to prevent future infringement). The Respondent recently amended its petition in that action to include its right to use the Domain Name and now contends that it would be wasteful to litigate that issue in both proceedings.
The Policy provides a mandatory but non-exclusive form of relief for complainant trademark holders, which does not prevent complainants or respondents from “submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded” (Policy, paragraph 4(k)). “All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.” (Policy, paragraph 5)
The Panel has broad discretion where there are parallel proceedings:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” (Rules, paragraph 18(a))
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.14.1 and 4.14.2, UDRP proceedings are expeditious and limited in scope. They do not entail all the procedures available and all the issues that can be addressed in civil litigation. UDRP panels are cognizant of the fact that their decisions are not binding on the courts but give the parties prompt resolution of one important operational issue – who controls the disputed domain name, at least until other pertinent legal challenges are finally laid to rest. Hence, UDRP panels are typically reluctant to suspend or terminate proceedings in deference to ongoing judicial proceedings of indeterminate duration. This Panel is of the same view and declines, therefore, to suspend or terminate the present proceeding.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7.
The Domain Name incorporates the Complainant’s B.Y.L.T. mark in its entirety, absent the periods that cannot be included in a URL in the Domain Name System for technical reasons, and adds the dictionary word “basics”, which is descriptive and does not avoid a finding of confusing similarity. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7. The fact that the Respondent’s website content is distinct from the Complainant’s does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.15.
The Panel finds, therefore, that the Complainant has established the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has made out a prima facie case with evidence of registered trademark rights, confusing similarity, and lack of permission to use the mark in a Domain Name for a clearly commercial website.
The Respondent claims rights or legitimate interests in the Domain Name under the Policy, paragraphs 4(c)(i) and (ii), as it has been known by a name corresponding to the distinctive portion of the Domain Name (“BYLT”) since 2016 and has been using the Domain Name since 2017 for its business selling clothing online, before notice of this dispute. This satisfies the plain language of these two Policy illustrations of rights or legitimate interests, even though the Respondent has not obtained the trademark registration for which it applied or submitted sufficient evidence in this proceeding to establish common law trademark rights in BYLT or BYLT BASICS (compare WIPO Overview 3.0, section 1.3, on the kinds of evidence required for complainants to establish unregistered trademark rights).
More fundamentally, UDRP panels have considered the question of fair use when a domain name is confusingly similar to another party’s trademark (see id., section 2.5), assessing whether a respondent “falsely suggests affiliation with the trademark owner.” This analysis does not favor the Complainant here. The nature of the Domain Name in this case is not telling. The “bylt” string is used by others, as a search query demonstrates, and “basics” does not especially point to the Complainant. Nothing in the Respondent’s website or metadata emulates the Complainant’s website or hints falsely at an association with the Complainant. Their commercial offerings are quite different. The Complainant does sell t-shirts branded with its logo, as do other manufacturers of sports drinks, but this is clearly incidental and promotional for its main product lines. The Respondent is focused on selling casual apparel and accessories.
To prevail against the Respondent on the second element of the Complaint, the Complainant would need to establish that the Respondent is not making fair use of the Domain Name in connection with a pre-existing, bona fide commercial offering based on a corresponding name because the Respondent most likely set up its business under that name in bad faith precisely to exploit the Complainant’s trademark. That possibility is better addressed in the bad faith discussion below.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Complainant argues that the Respondent “knew or should reasonably have known” about the Complainant’s trademark and therefore must have been targeting the mark when creating the Domain Name and, by implication, when creating the business with a corresponding name several months earlier. The Complainant asserts that the Respondent could easily have found the Complainant’s trademark registrations with a simple search, but the Panel notes that this is not as simple as the Complainant suggests. The Complaint repeatedly refers to the registered trademark as BYLT, but the registrations are actually not for BYLT but for the acronym B.Y.L.T. The most common online search for United States trademark registrations is through the USPTO Trademark Electronic Search System (TESS). A TESS search on “BYLT” does not produce the Complainant’s trademark registrations. (Indeed, it is not even possible to run a normal search for B.Y.L.T. in TESS, because it does not recognize the periods as search characters). The Complainant cites WIPO Overview 3.0, section 3.2.2 (“Knew or should have known”), and the Respondent cites as well section 3.2.3 (“Willful blindness”). Reviewing the cases cited in these sections of the WIPO Overview 3.0, it is clear that there is nothing so definitive as a general principle of “constructive notice,” even where both parties are located in the same country, as they are here, resulting in an inference of bad faith if the respondent does not conduct a trademark search in a particular manner. As section 3.2.2 concludes, “Application of this concept [constructive notice] may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.”
Here, the Complainant by its own account started using its mark in September 2014. It does not furnish evidence supporting its sales and reputation in 2016 when the Respondent started a business with the name “BYLT”, or in January 2017, when the Respondent registered the Domain Name. The record does not demonstrate that the Complainant’s mark was well known by that time. The Complainant did not have the associated simple “.com” domain name, and other parties used the string “bylt” online. The Respondent offers plausible reasons for choosing the name “BYLT” (a fanciful misspelling of “built”) for its company name in August 2016, and therefore for its Domain Name a few months later, and the Respondent subsequently applied for trademark registration of BYLT.
On the available record, the Panel finds the Respondent’s account credible, that it was unaware of the Complainant’s recent trademark registration when the Respondent started a business in an unrelated field and had its own legitimate reasons for selecting the company name and corresponding Domain Name. Consequently, the Panel concludes that the Respondent prevails on the third element of the Complaint, as well as on the second element of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: October 14, 2019