BestOffice.com: Generic, 19 year old #domain name lost in a #UDRP dispute

The domain BestOffice.com, a seemingly generic, 19 year old domain, was lost via the UDRP process.

Registered in early 2002, the domain was initially parked with PPC ads and eventually it was utilized as a catalogue of mostly office chairs for sale.

The Complainant in this UDRP, Factory Direct Wholesale LLC, asserted rights to the mark BEST OFFICE since 2014. In the filing, the Complainant claims that the domain changed hands and the Respondent is not the original registrant; they asserted that such acquisition took place in October 2019.

NameBio lists the sale of BestOffice.com via Sedo, that took place on September 23, 2019 for the sum of $7,144 dollars.

Indeed, such a sale was listed on the weekly report we received from Sedo a week later, that listed the completed transaction at 6500 Euro.

The Respondent filed no response in this UDRP, making matters easier for the Complainant. Dawn Osborne, Panelist, ordered the domain BestOffice.com to be transferred to the Complainant:

The Respondent did not acquire the Domain Name until 2019, seven years after the Complainant began use of its mark. In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses  the Complainant’s trade mark for competing products and unauthorized material from the Complainant’s site showing that the Respondent has actual knowledge of the Complainant, its business, rights and services. The Complainant has also demonstrated that the Domain Name and the Respondent are connected with a major competitor and a former supplier of the Complainant.

Full details on the UDRP decision follow:

Factory Direct Wholesale, LLC v. decai fu

Claim Number: FA2111001971788

PARTIES

Complainant is Factory Direct Wholesale, LLC (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is decai fu (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestoffice.com>, (‘the Domain Name’) registered with Google LLC.

PANEL

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

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 3, 2021; the Forum received payment on November 3, 2021.

On November 3, 2021, Google LLC confirmed by e-mail to the Forum that the <bestoffice.com> Domain Name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 November 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2021 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@bestoffice.com. Also on November 4, 2021, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On November 29, 2021 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant is the owner of the trade mark BESTOFFICE, registered, inter alia in the USA with first use in commerce recorded as 2013 for furniture.

The Domain Name is identical for the purposes of the Policy to the Complainant’s BEST OFFICE trade mark adding only the gTLD “.com”.

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.

Respondent is using the <bestoffice.com> domain name to pass itself off as Complainant. Respondent is using the Domain Name for a website that markets and promotes products that directly compete with Complainant’s BESTOFFICE brand products. Complainant’s BESTOFFICE brand furniture products directly compete with SMUGDESK brand products and have directly competed against SMUGDESK products for many years. In addition, the evidence shows that Respondent’s <bestoffice.com> website is being operated by or with the cooperation of the entity(ies) behind the smugdesk.net website. The contact number for the <bestoffice.com> website is the same number as the contact number listed for the smugdesk.net site. In addition, the “FAQ’s” and “About Us” sections on the two sites are virtually identical. Furthermore, a comparison of the <bestoffice.com> and smugdesk.net sites shows that many identical products are marketed in identical ways, including use of the same promotional photographs, on both sites, but such identical products are marketed as BESTOFFICE brand products on <bestoffice.com> and as SMUGDESK brand products on smugdesk.net.

In addition, a person named “Decai Fu” is the registered agent for Smugdesk, LLC. It also cannot be mere coincidence that someone with the same name as Respondent is the registered agent for a major competitor of Complainant. Thus, Respondent (really Smugdesk) is trying to trick customers of Complainant’s BESTOFFICE brand products to come to Respondent’s <bestoffice.com> website and pass off SMUGDESK products as BESTOFFICE products on the <bestoffice.com> website.

That Respondent is trying to pass off its products as Complainant’s BESTOFFICE brand products is further shown by Respondent’s misappropriation of photographs from Complainant’s Amazon.com store listings of Complainant’s PC Chair product and using those same photographs in the listing for the identical chair on Respondent’s website. Complainant gave no permission for Respondent to use Complainant’s photos on Respondent’s <bestoffice.com> site. It is well established that attempting to pass off one’s products as those of another is not a bona fide offering of goods.

Although the Domain Name was originally registered in 2002, the Respondent did not acquire such domain name until October 3, 2019, at the earliest. The Panel should consider the date on which Respondent acquired the <bestoffice.com> domain name – not the date on which it was originally registered – in assessing bad faith.

It is well established that actual knowledge of prior rights in an identical or confusingly similar mark is a factor supporting bad faith. As shown above, Respondent’s <bestoffice.com> website is affiliated with or controlled by the same entity(ies) that are behind the smugdesk.net website. As a major competitor of Complainant, Respondent/Smugdesk was fully aware of Complainant’s use of and rights in the BESTOFFICE mark when Respondent acquired the <bestoffice.com> domain name in or about October 2019.

Furthermore, upon information and belief, SMUGDESK brand products are produced by Henglin Home Furnishings Co., Ltd. Henglin has also been manufacturing furniture products for Complainant since 2016 and thus clearly has had knowledge of Complainant’s rights in the BESTOFFICE mark since 2016.

That Complainant’s supplier Henglin is connected to the Domain name is also supported by the fact that Respondent’s address in the Forum’s Domain Dispute Verification Request is the same as the address of Henglin’s logistic center eFullfill, Inc. Thus, Henglin/Smugdesk/ Respondent was well aware of Complainant’s BESTOFFICE brand products before Respondent acquired the <bestoffice.com> domain name and had actual knowledge of Complainant’s rights in the BESTOFFICE mark. Of all of the possible domain names that Respondent could have selected or acquired, Respondent chose to acquire a domain name that contained the trademark of a direct competitor to use to market and sell products virtually identical to those offered by that competitor. These facts clearly show that Respondent acquired the <bestoffice.com> domain name with actual knowledge of Complainant’s BESTOFFICE mark and are evidence of bad faith.

Respondent is using the Domain Name to pass off its furniture products as Complainant’s BESTOFFICE products and cause consumer confusion. Here, such consumer confusion not only harms Complainant from loss of sales caused by confused customers visiting Respondent’s <bestoffice.com> website believing that they are purchasing Complainant’s BESTOFFICE brand products, but Complainant’s reputation will also be harmed whenever customers purchase products from <bestoffice.com> that are inferior in quality to Complainant’s genuine BESTOFFICE brand products and those customers complain about such products, and whenever confused customers receive poor service from <bestoffice.com> believing (by mistake) that they are dealing with Complainant. It is well established that use of a disputed domain name to cause consumer confusion is evidence of bad faith.

Where a respondent uses the dispute domain name to disrupt a complainant’s business and attempts to attract Internet users to its competing website for commercial gain, respondent has registered the name in bad faith.

Panels have repeatedly found bad faith where the respondent ignores the complainant’s requests that the respondent cease its use of the domain names in question. Complainant’s counsel never received a response to a cease and desist letter.

Respondent registered the domain name through a privacy service.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Complainant is the owner of the trade mark BESTOFFICE, registered, inter alia in the USA with first use in commerce recorded as 2013 for furniture.

The Domain Name acquired by the Respondent in 2019 has been used for competing products. The Respondent is connected with a major competitor of the Complainant and a company that has supplied the Complainant previously. The web site attached to the Domain Name features pictures taken from listings of the Complainant’s products on Amazon without authorization.

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The Domain Name consists of the Complainant’s BESTOFFICE mark (which is registered, inter alia, in USA for furniture with the first use recorded as 2013) merely adding the gTLD “.com”.

The gTLD “.com” does not distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be legitimate noncommercial fair use.

The web site attached to the Domain Name offers competing furniture and includes unauthorized material from the Complainant’s Amazon listings. The Respondent does not make it clear that there is no commercial connection with the Complainant. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent’s use of a confusingly similar domain name to compete with the Complainant’s business did not constitute a bona fide use of goods and services.). See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

The Respondent did not acquire the Domain Name until 2019, seven years after the Complainant began use of its mark.

In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s trade mark for competing products and unauthorized material from the Complainant’s site showing that the Respondent has actual knowledge of the Complainant, its business, rights and services. The Complainant has also demonstrated that the Domain Name and the Respondent are connected with a major competitor and a former supplier of the Complainant.

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int’l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to compete with the complainant’s business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bestoffice.com> domain name be TRANSFERRED from Respondent to Complainant.

Dawn Osborne, Panelist

Dated: November 30, 2021

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Comments

One Response to “BestOffice.com: Generic, 19 year old #domain name lost in a #UDRP dispute”
  1. Andre says:

    What a stupid decision. Shame on them.

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