WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bluehost Inc. v. Whois Agent, Domain Protection Services, Inc. / Abedellatif Shatila, SHATILA E-COMMERCE

Case No. D2020-0503

1. The Parties

The Complainant is Bluehost Inc., United States of America (“United States” or “US”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.

The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Abedellatif Shatila, SHATILA E-COMMERCE, Lebanon.

2. The Domain Name and Registrar

The disputed domain name <mybluehost.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2020 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 amendment to the Complaint on March 8, 2020.

The Center verified that the Complaint together with the amendment to 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 March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. The Response was filed with the Center on April 1, 2020.

On April 2, 2020 the Complainant submitted a supplemental filing to which the Respondent answered in its supplemental filing dated April 3, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on April 9, 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 was founded in 2003 and is a provider of web hosting services offering a suite of tools to allow anyone worldwide to build an online web presence.

The Complainant is the exclusive owner of registered trademarks consisting of the word BLUEHOST in various jurisdictions throughout the world, including the following:

- the US Trademark for the word BLUEHOST with registration number 3,417,116 registered as of April 29, 2008,
- the US Trademark for the word BLUEHOST with registration number 4,644,445 registered as of November 25, 2014,
- the US Trademark for the word BLUEHOST with registration number 4,644,522 registered as of November 25, 2014.

The Complainant’s main operational domain name is <bluehost.com>, where the Complainant’s main website is located.

The disputed domain name was registered on December 30, 2016, and at the date of the decision resolves to an inactive website displaying a “May Be For Sale” message. According to the evidence put forward by the Complainant, prior to the date of the Complaint the disputed domain name redirected to the website <wix.com>, a competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its BLUEHOST trademark because the only difference between the relevant portion of the disputed domain name and the BLUEHOST trademark is the inclusion of the additional word “my” in the disputed domain name that does nothing to diminish confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use its BLUEHOST trademark in any manner. The Complainant also argues that by redirecting the disputed domain name to a website of one of Complainant’s competitors the Respondent has failed to create a bona fide offering of goods or services under the Policy. Moreover, according to the Complainant, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.

With regard to the third element, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant argues that it owns at least 27 registrations in eight countries or geographic regions worldwide for the BLUEHOST trademark, that was used since at least 2003, and that the Complainant employs a vast team of web advisors and powers approximately 2 million websites all over the world. The Complainant concludes that given the global reach and popularity of the Complainant’s services under the BLUEHOST trademark, the Respondent must have chosen the disputed domain name with knowledge of the Complainant’s activities and the name and trademark under which the Complainant is doing business. Also, the Complainant argues that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In addition, by redirecting the disputed domain name to a website offering web hosting services the Respondent is clearly creating a likelihood of confusion with the BLUEHOST trademark, which constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. In addition, the Complainant argues that actual confusion arose when a customer of the Complainant sent a Twitter message to the Complainant about the disputed domain name (apparently confusing it with Complainant’s own URL, “my.bluehost.com”, which the Complainant shows it uses to provides its customers with access to their accounts).

The Complainant further argued in the amendment to the Complaint that the Respondent is a serial cybersquatter who has lost a number of previous decisions under the Policy and also that the Respondent has registered multiple domain names containing well-known trademarks of unrelated third parties, thus the Respondent has engaged in a pattern of conduct pursuant to paragraph 4(b)(ii) of the Policy.

In the supplemental filing the Complainant argued that even if the disputed domain name is listed for sale at the date of the Response, it was previously used to redirect to a website for Wix.com, a competitor of the Complainant, and that the Respondent only began redirecting the disputed domain name to the “May Be For Sale” page after the Complaint was filed, in an attempt to avoid a finding of bad faith. The Complainant also argues that the Respondent’s admission that the disputed domain name is for sale shows that the use thereof is clearly commercial.

B. Respondent

The Respondent submitted that the disputed domain name is not a web hosting website and it is listed for sale. The Respondent also argued that he is not a cybersquatter since he has never contacted the Complainant to offer to buy the disputed domain name and he has never used the disputed domain name as a website for showing ads or similar to the Complainant’s website. The Respondent also argues that there are a lot of domain names that include the word “bluehost” that are not owned by the Complainant. The Respondent also shows that his company Shatila E-Commerce was established in 2014 and deals also with sale and purchase of domain names and in this context the Respondent has purchased the disputed domain name in 2017 without any intention to misuse it and he had no knowledge of the Complainant’s domain name.

In the supplemental filing, the Respondent argues that there is no evidence of bad faith registration and use and that the Respondent has registered the disputed domain name simply because it had become available when the prior owner allowed the disputed domain name to expire. The Respondent also states that there is no sufficient proof that the disputed domain name was previously used to redirect to a website at <wix.com> because there was a written notice attached to the Complaint but there was no proof that it was submitted and that Wix.com answered. The Respondent also invokes that the Complainant took no action since the registration of the disputed domain name in January 2017 until March 2020.

6. Discussion and Findings

Supplemental filings

Paragraph 12 of the Rules allows a Panel in its discretion to request supplemental filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under paragraph 10(a) of the Rules the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. The Panel will allow the supplemental filings as the filing of the Complainant was mainly directed by a new fact asserted in the Response. The Parties were allowed fair treatment as the Respondent had also filed a supplemental filing that will be allowed as well. The proceedings were not delayed as the filing took place before the Panel was appointed.

The Panel shall consider the issues present in the case based on the statements and documents submitted by the Parties.

“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”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the BLUEHOST trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Here the disputed domain name wholly incorporates the Complainant’s BLUEHOST trademark in addition to the generic word “my”. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

The addition of the word “my” does not distinguish the disputed domain name from the Complainant’s trademark; see, Air France v. Kitchkulture, WIPO Case No. D2002-0158 (<my-airfrance.com>), DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097 (<my-dhl.com>), Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619 (<my-mastercard.info>), Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191 (<my-volkswagen.com>).

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically disregarded when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that it holds rights over the trademark BLUEHOST and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name and that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the BLUEHOST trademark in any manner. The Respondent has not contradicted these latter allegations.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

Rather, the Complainant submitted that at the date of the Complaint the disputed domain name was used to redirects visitors to “www.wix.com”, which offers web hosting services that compete with the services offered by Complainant under the BLUEHOST trademark. The Respondent argued that the evidence presented by the Complainant in this regard is not sufficient but has not denied that the disputed domain name was used in this manner. Given the evidence in the case file and the certified statement by the Complainant, the Panel is persuaded that the disputed domain name was used to redirect Internet users to “www.wix.com” that offers competing services with those of the Complainant. Such use cannot support a finding of rights or legitimate interests. “A respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests.” (Section 2.5.3 of the WIPO Overview 3.0).

The Respondent argued that it is a company “that one of its works is to buy domain names” and it has bought the disputed domain name without any intent to misuse it, and the disputed domain name is not a web hosting website, rather it is listed for sale. “Whilst the practice of acquiring and selling domain names for profit is not in itself illegitimate, it is so when the domain name in question, as in the present case, is identical or confusingly similar to a trade mark and there is evidence that it was acquired for its trade mark value as opposed to its generic value, if any.” See Albemarle Corporation v. Marino Specogna, WIPO Case No. D2016-1960. The mere offer to sell the domain name does not give rise to rights or legitimate interests (even though the Panel notes that in the Response the Respondent argued that the disputed domain name is listed for sale, while in the supplemental filing it argued that he did not change the content of the website to put the disputed domain name for sale). The Panel is not convinced by the Respondent’s assertions as the Respondent has not presented any evidence of his use or preparation to use the disputed domain name in a manner that would support a finding of rights or legitimate interests in the disputed domain name. For a similar finding, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No.D2001-1447.

The Panel therefore finds that the Respondent has not rebutted the prima facie case set forth by the Complainant.

Moreover, the Panel finds that the composition of the disputed domain name is such that it effectively suggests sponsorship or endorsement by the Complainant. See Skoda Auto a.s. v. GlobeHosting, Inc.; Bogdan Hasnes, Evox Protrade SRL, WIPO Case No. DRO2019-0017; section 2.5.1 of the WIPO Overview 3.0.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

As indicated above, the case file contains evidence that the disputed domain name was used to redirect visitors to “www.wix.com”, which offers web hosting services that compete with the services offered by Complainant under the BLUEHOST trademark. For this reason and given also that the disputed domain name is confusingly similar to the trademark of the Complainant and that the disputed domain name was registered long after the registration of the Complainant’s trademarks, the Panel concludes that the Respondent must have been aware of Complainant’s trademarks at the time he registered the disputed domain name. The Respondent denied having known the Complainant’s domain name, but has not denied having known the Complainant’s trademark.

Also, a search on the Internet for the term “bluehost” conducted by the Panel mainly shows search results that have a connection with the Complainant’s business. In the circumstances, the only possible explanation for the Respondent’s selection of the disputed domain name is that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant or to disrupt or otherwise harm the reputation of the Complainant, as similarly held in Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, supra.

As regards the use of the disputed domain name, as mentioned, the case file contains evidence showing that the disputed domain name resolved to “www.wix.com”, which offers web hosting services that compete with the services offered by Complainant under the BLUEHOST trademark, which shows in the Panels’ view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark BLUEHOST as to the source, sponsorship, affiliation or endorsement of the website.

The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

The Respondent provided no explanations for why he registered the disputed domain name, except that it was available for registration and that his company Shatila E-Commerce deals with the sale of domain names.

It is true that “[g]enerally speaking, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor).” Section 3.1.1 of the WIPO Overview 3.0. However, a finding of bad faith is case specific and if circumstances indicate “that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv) website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors, (v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to ‘sell to the highest bidder’ or otherwise transfer the domain name to a third party, (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, (viii) a respondent’s request for goods or services in exchange for the domain name, (ix) a respondent’s attempt to force the complainant into an unwanted business arrangement, (x) a respondent’s past conduct or business dealings, or (xi) a respondent’s registration of additional domain names corresponding to the complainant’s mark subsequent to being put on notice of its potentially abusive activity”. Section 3.1.1 of the WIPO Overview 3.0.

The Panels finds that the circumstances of this case support a finding of bad faith because: the Respondent was likely aware of the trademarks of the Complainant at the registration of the disputed domain name, the trademark of the Complainant is distinctive for the services offered, the website at which the disputed domain name redirected offers competing services to those of the Complainant, the Respondent failed to provide credible evidence for the reasons of registering the disputed domain name. Also, there appears to be a pattern of abusive registrations by the Respondent, as the unrebutted evidence in the case file shows that the Respondent was involved in at least six other UDRP proceedings where similar factual situation determined the panels to decide in favor of the complainants.

The last fact also supports a finding grounded on paragraph 4(b)(ii) of the Policy, referring to the respondent registering “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 you have engaged in a pattern of such conduct”. See, Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535. This finding is also supported by the fact that from the unrebutted evidence from the Complainant the Respondent had registered a number of domain names incorporating third party trademarks. See for a similar finding Albemarle Corporation v. Marino Specogna, supra.

Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357.

The Respondent’s reference to the period of time between the registration of the disputed domain name and the filing of the Complaint does not change the above conclusions. As summarized in section 4.17 of the WIPO Overview 3.0, the mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits, and panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. See Racing Planet OHG v. Tuca Impex SRL, WIPO Case No. DRO2018-0008.

In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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 disputed domain name, <mybluehost.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: April 23, 2020