Barefoot Dreams, Inc. lost bid to usurp aged domain BFD.com

Barefoot Dreams, Inc., a retailer of luxury apparel, homeware, and accessories, filed a UDRP to usurp the premium, aged three letter domain BFD.com, registered in 1993.

The Chinese registrant responded via their legal representative to the UDRP, filed at the Forum (NAF) thus:

Respondent alleges that Complainant’s mark is not well known in China; further, it lacks distinctiveness or secondary meaning. Complainant’s first trademark filing was in 2019.

Respondent states that it uses the disputed domain name create a blockchain project, i.e. Blockchain Foundation Data, and <bfd.com> just corresponds to the initials of the name of the blockchain project. The project was approved and setup in 2019. Respondent provides documents to support its allegations. At the end of 2019, the blockchain project established a strategic cooperation with <cyfs.com>.

Further, says Respondent, the disputed domain name was registered in 1993, far earlier than Complainant’s trademark rights.

Complainant asserts common law rights in the BFD mark dating back to 2020 and has registered the mark in numerous jurisdictions in 2020, the earliest filing date being 2019.

Eugene I. Low as Presiding Panelist, Richard W. Hill and Paddy Tam as Panelists, delivered a finding favoring the Respondent and denied transfer of the domain to the Complainant. Surprisingly, they based their decision not to declare a finding of Reverse Domain Name Hijacking, as requested, for the following reasons:

The Panel considers that this is not an appropriate case for a finding of Reverse Domain Name Hijacking. The name of Respondent was hidden by privacy service. It only transpired in Respondent’s Additional Submission that Respondent acquired the disputed domain name in August 2018. The date that Respondent became the registrant of the disputed domain name was important to Complainant but it was only revealed late in these proceedings.

Where does one draw the line with regards to the time difference between the registration of a domain and a trademark’s first use/registration? In our opinion, whether that’s one year or 20 years there should be no difference: the Complainant attempted to usurp what’s theirs without having any kind of seniority in their mark’s use.

The domain transfer was denied.

BFD, Inc. and Barefoot Dreams, Inc. v. kanggeng sheng

Claim Number: FA2205001997581

PARTIES

Complainant is BFD, Inc. and Barefoot Dreams, Inc. (“Complainant”), represented by Merri Moken of Paul Hastings LLP, New York, USA. Respondent is kanggeng sheng (“Respondent”), represented by Alice Wen of Head of Domain Name Workstation, Shenzhen, China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with Internet Works Online International (HK) Co., Limited.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Eugene I. Low as Presiding Panelist, Richard W. Hill and Paddy Tam as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 23, 2022; the Forum received payment on May 23, 2022.

On May 26, 2022, Internet Works Online International (HK) Co., Limited confirmed by e-mail to the Forum that the domain name is registered with Internet Works Online International (HK) Co., Limited and that Respondent is the current registrant of the name. Internet Works Online International (HK) Co., Limited has verified that Respondent is bound by the Internet Works Online International (HK) Co., Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bfd.com. Also on May 31, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on June 20, 2022, however it was not determined what arguments Respondent raised because the Response was submitted in Chinese.

Additional Submissions were received from Complainant (in English) and Respondent (in Chinese) on, respectively, June 28, 2022 and July 1, 2022.

On July 1, 2022, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Eugene I. Low as Presiding Panelist, Richard W. Hill and Paddy Tam as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant, Barefoot Dreams, Inc..

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese by default.

Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).

In the present case, Respondent’s correspondence with the Forum, its Response, and its Additional Submission show that it is fluent in English. The Response is in Chinese. Complainant’s rebuttal of the Response in its Additional Submission shows that it is fluent in Chinese. That is, both parties are fluent in both languages and are able to respond to each other’s submissions. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition and cost-effectiveness, are best satisfied by delivering the decision in English without requesting translation of the case materials from the parties. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017). The Panelists, Eugene I. Low and Paddy Tam confirm that they are fluent in both English and Chinese and Richard Hill confirms that he is able to understand the relevant Chinese-language documents of the case file.

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

There are two Complainants in this matter: BFD, Inc. and Barefoot Dreams, Inc. BFD, Inc. is the owner of the primary mark BFD that is the subject of this complaint, and has exclusively licensed Barefoot Dreams, Inc. to make and sell products under the BFD mark, which it does.

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.

The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.

PRELIMINARY ISSUE: ADDITIONAL UNSOLICITED SUBMISSIONS

As recapped above, both parties filed Additional Submissions. Both Additional Submissions were unsolicited.

The Forum’s Supplemental Rule 7 provides that it is within the discretion of the Panel to accept or consider additional unsolicited submissions. Having considered the nature of the parties’ additional submissions, and that both parties did file their respective additional submissions and did not seek to disallow the other party’s additional submissions, the Panel admits both additional submissions. The Panel considers that no unfairness or delay is caused by admitting the parties’ additional submissions.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it is is a retailer of luxury apparel, homeware, and accessories including but not limited to plush blankets, throws, and bathrobes. Complainant asserts common law rights in the BFD mark dating back to 2020 and has registered the mark in numerous jurisdictions in 2020, the earliest filing date being 2019.

Complainant alleges that the disputed domain name is identical or confusingly similar to its BFDs mark as it incorporates the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).

According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BFD mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, when Complainant offered to buy the disputed domain name for USD 25,000, Respondent requested a price in excess of USD 200,000. Respondent is likely planning to use the disputed domain name to offer counterfeit or unauthorized versions of Complainant’s products.

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent offers the domain name for sale and used a privacy service to mask its identity.

B. Respondent

Respondent alleges that Complainant’s mark is not well known in China; further, it lacks distinctiveness or secondary meaning. Complainant’s first trademark filing was in 2019.

Respondent states that it uses the disputed domain name create a blockchain project, i.e. Blockchain Foundation Data, and just corresponds to the initials of the name of the blockchain project. The project was approved and setup in 2019. Respondent provides documents to support its allegations. At the end of 2019, the blockchain project established a strategic cooperation with .

Further, says Respondent, the disputed domain name was registered in 1993, far earlier than Complainant’s trademark rights.

Finally, Respondent alleges that it did not offer the sell the disputed domain name: that offer came from a third party, because the disputed domain name was parked and the parking displays an invitation to contact the third party who is in the business of acting as an agent to facilitate the sales of domain name.

Respondent asks the Panel to make a finding of Reverse Domain Name Hijacking against Complainant.

C. Additional Submissions

In its Additional Submission, Complainant rebuts the Response, stating in particular that Complainant is not obliged to show that its mark is internationally famous, but that in any event Complainant has provided a multitude of evidence showing that Complainant and its mark are well known. Complainant also reiterates that its mark does have distinctiveness and secondary meaning.

Further, says Complainant, the Response does not contain evidence of use of the disputed domain name for a blockchain project. A search on the Internet Archive does not show actual use for such a project; on the contrary, the resolving website merely displays an inquiry button for anyone interested in purchasing the disputed domain name.

According to Complainant, the registration date of 1993 for the disputed domain name is not relevant, because a search of the Internet Archive shows that the domain name was sold many times since its initial registration. Complainant notes that the relevant date is not the initial registration date, but the date on which Respondent acquired the disputed domain name, and that was likely in February 2022.

Further, says Complainant, the fact that the offer to sell the disputed domain name for a price in excess of out of pocket costs was not made by Respondent directly is not relevant: surely the agent that made the offer was acting on behalf of Respondent.

In its Additional Submission, Respondent asserts and provides evidence showing that it acquired the disputed domain name in August 2018.

FINDINGS

Complainant has rights in the trademark BFD dating back to 2019/2020 and uses it to market luxury apparel.

Respondent acquired the disputed domain name in August 2018.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The element is established.

The disputed domain name is identical to Complainant’s BFD mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).

Rights or Legitimate Interests

Since the Complaint will be dismissed for the reasons set forth below, the Panel will not discuss this element of the Policy.

Registration and Use in Bad Faith

This element is not established.

Complainant does not allege – much less provide evidence to show – that its trademark rights predate 2019. Respondent has asserted and presented evidence (albeit only in its Additional Submission) showing that it acquired the disputed domain name in August 2018. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states under 3.8: “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”.

Complainant has not alleged – much less provided evidence to prove – that any specific special circumstances would justify a finding of bad faith registration. Consequently, in the absence of contrary evidence, the Panel cannot find bad faith registration and the Complaint must be dismissed. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

For the avoidance of doubt, the Panel makes no findings on other contentions of the parties under this element.

Reverse Domain Name Hijacking

The Panel considers that this is not an appropriate case for a finding of Reverse Domain Name Hijacking. The name of Respondent was hidden by privacy service. It only transpired in Respondent’s Additional Submission that Respondent acquired the disputed domain name in August 2018. The date that Respondent became the registrant of the disputed domain name was important to Complainant but it was only revealed late in these proceedings. Therefore, the Complaint as initially filed was not bound to fail.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAINS WITH Respondent.

Eugene I. Low as Presiding Panelist, Richard W. Hill and Paddy Tam as Panelists

Dated: July 6, 2022

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