When is a typo-domain of a famous brand not infringing on the mark? When the typo itself is also a word, at least according to the panelist who decided on the HobbyLibby.com UDRP.
In a shocking twist for Hobby Lobby Stores, Inc. and their HOBBY LOBBY mark, the UDRP was denied because the “Libby” part is actually a word. Said the panelist:
“The Panel is not so persuaded. “Libby” is indeed a word. It is a commonly used name, short for Elizabeth. It is the name of a place in Montana. It is the name of an online library.”
Not only did the panelist deny the Complainant’s request to transfer the domain, they also found them guilty of engaging in Reverse Domain Name Hijacking:
“As noted, the Complaint states that the domain name should be considered as having been registered and being used in bad faith because “Libby” is not a word and that the only reason Respondent registered hobbylibby.com was to sell the domain name registration to Complainant. The Panel considers that Complainant must have known that both statements were false and that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Final decision: Deny the transfer of HobbyLibby.com and a declaration that the Complainant engaged in RDNH. The Respondent did not respond and they can thus continue typo-squatting on a famous mark. 🙄
Copyright © 2024 DomainGang.com · All Rights Reserved.Hobby Lobby Stores, Inc. v. Host Master / Transure Enterprise Ltd
Claim Number: FA2411002125098
PARTIES
Complainant is Hobby Lobby Stores, Inc. (“Complainant”), represented internally by Hunter D. Westfahl, Oklahoma, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hobbylibby.com, registered with Above.com Pty Ltd.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 14, 2024. Forum received payment on November 14, 2024.
On November 17, 2024, Above.com Pty Ltd. confirmed by e-mail to Forum that the hobbylibby.com domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2024 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@hobbylibby.com. Also on November 19, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, 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
Complainant, Hobby Lobby Stores, Inc., is one of the largest retailers in the United States. Complainant sells its products via physical retail stores in 48 states and its website “www.hobbylobby.com”. Complainant is the owner of several trademarks registered with the United States Patent and Trademark Office (“USPTO”).
Respondent’s hobbylibby.com domain name is identical or confusingly similar to Complainant’s HOBBY LOBBY trademark.
Because Complainant’s right to the exclusive use of the name “Hobby Lobby” vested long before Respondent’s creation of hobbylibby.com, Respondent has no rights or legitimate interests to the domain name. Because Complainant’s trademarks for “Hobby Lobby” were registered long before Respondent’s creation of hobbylibby.com, Complainant has the exclusive right to use the name “Hobby Lobby.” See 15 U.S.C. §1115(a) (“[Registration of a trademark] shall be prima facie evidence of the…exclusive right to use the registered mark in commerce…”). This prohibits Respondent from using the phrase “hobbylibby” in connection with the selling of goods. Therefore, Respondent has no rights or legitimate interests to hobbylibby.com.
Respondent’s registration and use of hobbylibby.com constitutes bad faith, because by using this name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to this website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
Consumers associate the name “hobbylibby” with Complainant’s trademark. This is evidenced by performing a Google search for “hobbylibby.” Nearly all of the results pertain to Complainant’s trademark. Because consumers associate Complainant’s trademark with hobbylibby.com, Respondent is attempting to attract, for commercial gain, Internet users to hobbylibby.com by creating a likelihood that this website would be confused with Complainant’s registered trademarks.
Furthermore, circumstances indicate that Respondent registered hobbylibby.com 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 for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Respondent registered the domains hobbylibby.com, which is identical to hobbylobby.com, except the “o” in “lobby” is replaced with an “i” in the hobbylibby.com domain name. “Libby” is not a word. This shows that the only reason Respondent registered hobbylibby.com was to sell the domain name registration to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has not established all the elements entitling it to relief.
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 the domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
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 as 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
Complainant has shown that it has rights in the HOBBY LOBBY mark through three registrations with the USPTO in International Class 35, namely Reg. No. 2,866,317 registered on July 27, 2004 for “Retail store services in the field of arts and crafts”; Reg. No. 3,068,117, registered on March 14, 2006 for “Retail store services featuring artificial flowers, artificial plants, baskets, candles, cards, ceramics, fabrics, framed art, furniture, garden decor, glassware, holiday merchandise, home accents, jewelry, metalware, needle art, party supplies, photo frames, picture frames, potpourri, pottery, seasonal merchandise, sewing notions, silk flowers, and wearable art”; and Reg. No. 4,280,022, registered on January 22, 2013 for “Online retail store services featuring a wide variety of consumer goods of others”.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 “), section 1.7.
The Panel finds Respondent’s hobbylibby.com domain name to be confusingly similar to Complainant’s HOBBY LOBBY mark, only differing by the substitution of the letter “i” for the letter “o”, which is insufficient to distinguish the domain name from Complainant’s mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on Complainant. However, once Complainant presents a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to Respondent. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
The hobbylibby.com domain name was registered on January 3, 2009, several years after the registration of two of Complainant’s three marks. Complainant relies entirely on the prior registration of those marks as establishing Respondent’s lack of rights or legitimate interests in the domain name. However, as Paragraph 4(c) of the Policy makes clear, any of the circumstances set out above, if established by Respondent, demonstrate rights or legitimate interests notwithstanding that Complainant has a corresponding prior registered trademark.
The Panel finds Complainant’s prior registration of its marks insufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent.
Complainant has failed to establish this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
Complainant relies on paragraphs 4(b)(i) and 4(b)(iv) as evidence of Respondent’s registration and use of the domain name in bad faith.
As to paragraph 4(b)(iv), Complainant asserts that Respondent has used the domain name and refers to “this website”. However, Complainant has produced no evidence of any use of the domain name, whether for a website or otherwise. Complainant’s Annex 5 shows that the confusing similarity between the domain name and Complainant’s mark has led a Google search for “hobbylibby” to produce results for “hobby lobby”, stating “Showing results for hobby lobby Search instead for hobbylibby”. Complainant asserts that this shows that Respondent is attempting to attract, for commercial gain, Internet users to hobbylibby.com by creating a likelihood that this website would be confused with Complainant’s registered trademarks.
The Panel accepts that the mark and the domain name are confusingly similar and that the mark features in many Google search results. However, the Panel does not accept that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of any web site or location or of a product or service on any web site or location.
As to paragraph 4(b)(i), Complainant asserts that circumstances indicate that Respondent registered hobbylibby.com primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant further asserts that Respondent registered the domains [sic] hobbylibby.com, which is identical to hobbylobby.com, except the “o” in “lobby” is replaced with an “i” in the hobbylibby.com domain name. “Libby” is not a word. This shows that the only reason Respondent registered hobbylibby.com was to sell the domain name registration to Complainant.
The Panel is not so persuaded. “Libby” is indeed a word. It is a commonly used name, short for Elizabeth. It is the name of a place in Montana. It is the name of an online library.
The word “hobby” is a dictionary word. It is not distinctive. The combination of “hobby” and “libby” in Respondent’s domain name, albeit confusingly similar to Complainant’s mark, are insufficient to constitute evidence that Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
There is no evidence that Respondent had Complainant’s mark in mind when registering the domain name almost 16 years ago nor that Respondent has approached Complainant to sell the domain name.
Complainant has failed to establish this element.
Reverse domain name hijacking
Reverse Domain Name Hijacking (“RDNH”) is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Rule 15(e) provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As noted, the Complaint states that the domain name should be considered as having been registered and being used in bad faith because “Libby” is not a word and that the only reason Respondent registered hobbylibby.com was to sell the domain name registration to Complainant. The Panel considers that Complainant must have known that both statements were false and that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
DECISION
Complainant 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 hobbylibby.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: December 12, 2024
