WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burt's Bees, Inc. v. Traffic On a.k.a. Nick Kornzo

Case No. D2011-1759

1. The Parties

The Complainant is Burt's Bees, Inc. of Durham, North Carolina, United States of America (“United States”), represented internally.

The Respondent is Traffic On a.k.a. Nick Kornzo of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <burts-bees.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2011. On October 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 17, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2011.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on November 25, 2011. 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 the manufacturer and distributor of a line of natural personal care products that are sold under the trade mark BURT’S BEES. These products include cosmetics, skin care products, creams, oils, soaps, moisturizers, lotions, lip balms and glosses, shaving lotions, shaving balms, colognes, toothpaste and related retail services. According to the Complaint, the Complainant’s products are sold throughout the United States and abroad.

The Complainant alleges further that the mark BURT’S BEES was originally derived from the name of one of its founders, Burt Shavitz, who owned a small honey bee business in Maine and originally sold beeswax candles and lip balms, before extending into the present wide natural personal products range. It alleges that the business and the use of the BURT’S BEES mark go back to at least 1988. The Complainant has also registered and uses the domain names <burtsbees.com> and <burtsbees.net> operating websites at these domain names (see further Complaint, Exhibit E, for printouts from these websites). In addition, the Complainant has several United States registered trade marks consisting of the words “Burt’s Bees” registered in respect of cosmetics and skin care products and online retail services for such products, as well as other trade marks for the same kinds of products that consist of the words “Burt” or “Burt’s Bees” in combination with other words (Complaint, paragraph 20 and Exhibit E).

The Respondent “Traffic On” is the owner of 92,682 domain names while the Respondent’s administrative contact, “Nick Kornzo”, is listed as the owner of 75 names (See WhoIs searches contained in Complaint, Exhibit F, which give the number of registrations in the names of Traffic On and Nick Kornzo, not the details of the names actually registered).

The disputed domain name was registered by the Respondent on March 9, 2010 (Complaint, Exhibit A.). The disputed domain name resolves to a website “parked free” by GoDaddy.com that contains links to the websites of third parties that also offer personal care products (Complaint, Exhibit H; visited by the Panel on December 5, 2011). The Complainant alleges that this website also contains links to the Complainant’s website, but this is not visible in Complaint, Exhibit H, and could not be found by the Panel on its visit.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that all three sub-paragraphs of paragraph 4(a) of the Policy are satisfied.

As to paragraph 4(a)(i), the Complainant point to its United States Trademark Registrations of the mark BURT’S BEES, as well as asserting more generally rights arising from use in the marketplace over 20 years. It then contends that the disputed domain name is “nearly identical” or confusingly similar to its registered BURT’S BEES trade marks, noting that the disputed domain name incorporates all the words of the mark and that the insertion of a hyphen does not avoid the likelihood of confusion. Likewise, it argues that the addition of the gTLD “.net” is irrelevant in demonstrating any difference between its mark and the disputed domain name.

As to paragraph 4(a)(ii), it submits that the Respondent is not using the disputed domain name for a bona fide offering of goods and services, and that the Respondent has never received any authorization from it to do so. The Respondent has never used or sought to register a mark containing the words “Burt’s Bees” nor is it known by that name. With respect to the Respondent’s lack of bona fides (also relevant to paragraph 4(a)(iii)), the Complainant refers to the links to other websites to be found on the website at the disputed domain name (Complaint, Exhibit H), concluding that none of this shows that the Respondent has any rights or legitimate interests in the disputed domain name.

The foregoing matters are also relevant to the Complainant’s contentions under paragraph 4(a)(iii), namely that the disputed domain name was registered and has been used in bad faith. In particular, the Complainant alleges that, as the Respondent had no rights or legitimate interests in the disputed domain name, this leads to a presumption that it has been registered and used in bad faith and, more specifically, that the Respondent knew, or should have known, of the existence of the Complainant’s mark at the time of registration. Knowledge of the Complainant’s mark is also to be inferred from the fact that one of the links on the website associated with the disputed domain name leads to the Complainant’s own website (as noted above, this is not apparent from Exhibit H and was not seen by the Panel when it visited the website at the disputed domain name on December 5, 2011).

The Complainant also points to the presence of other sponsored links appearing on the website at the disputed domain name as evidence of use in bad faith, noting that prior Panel decisions have not required that a Respondent be a direct recipient of the commercial benefit of such links (such benefits may be obtained by GoDaddy.com, the parking service that hosts the website (Complaint, Exhibit B, GoDaddy.com registration agreement). In addition, the Complainant contends that the Respondent engages in domain name trafficking, pointing here to its extensive holdings of domain names that are confusingly similar to, or that incorporate, the famous trade marks of others, including <shiatv.com> and <kasinocuro.com> (see further Complaint Exhibits F and I). It appears further that the Respondent has been the unsuccessful Respondent in two previous UDRP proceedings in which transfer of the domain names in dispute to the relevant Complainant were ordered /see further Complaint, Exhibit G). Finally, the Complainant contends that inaccurate or incomplete contact information was provided by the Respondent when registering the disputed domain name and that this is a further indication of its bad faith in registering the disputed domain name. In this regard it appears that the Respondent indicated that it had a Gibraltar address, whereas investigations by the Complainant indicate the apparent postal code provided corresponds to Columbus, Ohio, United States, rather than Gibraltar (see further Complaint, paragraph 44 and Exhibits A and J) .

B. Respondent

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

6. Discussion and Findings

Each of the requirements in paragraph 4(a) needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.

Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:

“…if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”

Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the UDRP, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its Complaint.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.

As to the first of these requirements, the Complainant has shown that it has rights in a number of United States registered trademarks incorporating the words BURT’S BEES as well as potential unregistered rights in those words arising through use (at least in the United States). While the Complainant states that it has registered trademarks in other jurisdictions, no details of these are provided; the United States registrations, however, are sufficient for the purposes of this limb of paragraph 4(a)(i).

As to the second limb of this paragraph, the Panel has no difficulty in concluding that there is near or virtual identicality – the addition of the hyphen is a purely trivial difference – while there is ample precedent in UDRP decisions to the effect that the gTLD suffix is to be disregarded in assessments of identity or confusing similarity: see further Bang & Olufsen a/s v. Unasi Inc, WIPO Case No. D2005-0728 and Deutsche Welle v. DiamondWare Ltd., WIPO Case No. D2000-1202. But even if there is no exact identicality between the disputed domain name and the Complainant’s registered marks, in particular United States Registration Nos. 2,171,302 and 3,356,042, the Panel finds that there is clearly confusing similarity: anyone seeing the former would immediately assume that it is the same as, or closely associated with, the latter.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are 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.”

Essentially, these are matters for a respondent to put forward for the Panel’s consideration, as they are often difficult for a complainant to disprove directly. In the present case, there is nothing on the record to suggest that the circumstances referred to in any of the above sub-paragraphs are present. However, these are not an exhaustive statement of relevant circumstances for the purposes of paragraph 4(a)(ii) and, on the basis of the Complaint and exhibits, the following matters clearly indicate a lack of rights or legitimate interests on the part of the Respondent:

(i) The disputed domain name resolves to a website hosted or “parked free” by GoDaddy.com that contains various links to other sites, a number of which offer competing products and services to those of the Complainant;

(ii) There is no suggestion on the website at the disputed domain name that any of these links (and products and services) are provided by the Respondent itself;

(iii) It is reasonable to infer that the Respondent is receiving some commercial benefit from the click-through traffic provided by these links; and

(iv) There is nothing on the website at the disputed domain name to suggest that some fair use is being made of it, for example, through the provision of reviews or criticisms of the products or services provided by the Complainant.

The Panel finds that the only proper inference to be drawn from these circumstances is that the disputed domain name is being used to attract Internet users to the website there because of some perceived association with the Complainant and, once there, Internet users are then given links to websites not associated with the Complainant but selling competing products and/or services. In this regard, when the Panel visited the website on December 5, 2011, the alleged link back to the Complainant’s own website was not to be found and all the links were to third party (competitor) sites.

In the absence of any explanation from the Respondent, it seems reasonable to conclude that it is reaping some commercial benefit from its use of the disputed domain name, and that it has no corresponding rights or legitimate interests in the disputed domain name prior to its adoption, for example, by way of operation of a legitimate business.

C. Registered and Used in Bad Faith

The matters discussed in relation to paragraph 4(a)(ii) of the Policy are also relevant to paragraph 4(a)(iii), which requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed domain name after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

So far as the first of the circumstances referred to in paragraph 4(b)(i) of the Policy, there is no direct evidence of the Respondent having registered or acquired the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name”. However, it may be reasonable to assume that the circumstances referred to in paragraph 4(b)(ii) of the Policy do arise, in view of the extensive registrations of other domain names held by the Respondent (92,682 by Traffic On and 75 by Nick Kornzo, who is listed as the Administrative Contact for the disputed domain name) and the evidence that it has been the unsuccessful respondent in two earlier panel proceedings in which it has been ordered to transfer domain names to the relevant complainants: Universal Spheres Inc, d/b/a Goldenpalace.com v. Traffic On c/o Nick Kornzo, NAF Claim No. FA0729118; and Las Vegas Sands Corp. v. NONE c/o Nick Kornzo and James c/o Dave Rosenbom, NAF Claim No. FA1182353. Both findings were obviously to the effect that registration and use of the domain names in those cases had been made in bad faith.

While the Complainant (for obvious logistical reasons) has not listed the 92,757 domain names held jointly by Traffic On and Nick Kornzo, this seems to the Panel to be an extraordinary number for any individual to hold. Further, at least two of the domain names referred to by the Complainant (<shiatv.com> and <kasinocuro.com>) appear to be very similar to other domain names already registered which provide services of which the domain names are directly descriptive: <shiatv.net> (Shia Muslim videos) and <casinoeuro.com> (online gambling services in Europe), both of which were visited by the Panel and confirmed via Google searches on December 9, 2011. There is no suggestion that the Respondent is engaged in either of these businesses, which suggests its real business is, indeed, the acquisition of numerous domain names of a descriptive character that will block registrations by other persons who genuinely wish to carry on online businesses of the kinds described in the Respondent’s domain names.

The above matters certainly point, in the Panel’s view, to the Respondent’s bad faith in registering the disputed domain name, but other factors, referred by the Complainant, also confirm that this was the case and that there has been continued bad faith in using the disputed domain name with in relation to its associated website. These are as follows:

(i) In view of the Respondent Nick Kornzo’s likely location within the United States, rather than Gibraltar, it may be assumed that he had, or should have had, knowledge of the United States registrations of the Complaint’s BURT’S BEES trademark. While it is likely that this mark also enjoyed a considerable reputation as an unregistered mark, no specific evidence of this fame has been provided by the Complainant, apart from its assertions that this is so. Nonetheless, the fact of its United States registrations and the Respondent’s likely residence within the United States is sufficient for the Panel to draw the inference of actual or constructive knowledge of the existence of its mark by the Respondent, and hence its bad faith, at the time of its registration of the disputed domain name: see further Shaw Industries Group Inc., Columbia Insurance Co v. Marathon Triad, WIPO Case No. D2006-1408; and Shaw Industries Group, Inc., Columbia Insurance Company v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2010-1645.

(ii) The uncertainty about the Respondent’s actual location, in itself, is a circumstance pointing to its bad faith both in registering the disputed domain name and continuing to use it in relation to its associated website.

(iii) The various sponsored click-through links on the website at the disputed domain name, which point to competitors of the Complainant, even if the Respondent is not deriving a commercial benefit from this, strongly indicates that the circumstances referred to in paragraph 4(b)(iv) of the Policy arise – many of the products and services linked to are the same as, or closely related to, those offered by the Complainant and the Respondent’s use of the disputed domain name here is clearly in bad faith.

In the absence of any explanation from the Respondent in relation to the above matters, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy have been made out by the Complainant.

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 <burts-bees.net> be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist
Dated: December 9, 2011