Westmore · UDRP DecisionBissellcommercialvacuum.com
The Panel ordered transfer of <bissellcommercialvacuum.com>. It found the domain confusingly similar to Complainant’s registered BISSELL mark, held that Complainant’s unrebutted prima facie case established Respondent’s lack of rights or legitimate interests, and found bad faith under Policy paragraph 4(b)(iv). The domain was used for an affiliate-supported advertorial website promoting competing vacuum-cleaner brands, thereby attracting users for commercial gain through confusion with the BISSELL mark.
The timeline behind bissellcommercialvacuum.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates that an affiliate or advertorial website does not obtain legitimacy merely because it contains editorial-style content or discloses affiliate participation. Where the domain itself appropriates a recognizable trademark and the site promotes competing products for actual or intended revenue, the domain can support a finding of commercial-confusion bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BISSELL Homecare, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Commercial Vacuum Case No. D2018-0211 1. The Parties The Complainant is BISSELL Homecare, Inc. of Grand Rapids, Michigan, United States of America (“United States), represented by CSC Digital Brand Services Group AB of Stockholm, Sweden. The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Commercial Vacuum of Baltimore, Maryland, United States. 2. The Domain Name and Registrar The disputed domain name <bissellcommercialvacuum.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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 Complainant on February 8, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 12, 2018. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2018. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 19, 2018. 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 Complainant states that it “first began in 1876,” that it “manufactures and markets vacuums, sweepers, carpet- cleaning machines, hard floor cleaners, and cleaning formulas,” and that it “has grown and expanded to sell its products in dozens of countries, making [Complainant] the number one brand in floor care appliances.” Complainant states, and provides evidence to support, that it owns registrations for the trademark BISSELL (the “BISSELL Trademark”) in the United States, China and the European Union, including U.S. Reg. No. 705542 for use in connection with, inter alia , “vacuum cleaners” (first used in commerce September 30, 1957; registered October 11, 1960). The Disputed Domain Name was created on June 17, 2017, and, as described by Complainant and not contradicted by Respondent, “redirects Internet users to a third party website” where “Respondent offers and attempts to sell the products of Complainant’s competitors, which directly compete with Complainant’s own offerings.” 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the BISSELL Trademark because “the terms ‘commercial vacuum’ [are] closely linked and associated with Complainant’s brand and trademark only serve[] to underscore and increase the confusing similarity between the Disputed Domain Name and Complainant’s trademark.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not commonly known by the name BISSEL”; “selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(iii)”; and “Respondent registered the Disputed Domain Name on June 17, 2017, which is significantly after Complainant filed for registration of its BISSELL trademark with the USPTO, SAIC and EUIPO, and also significantly after Complainant first started using its trademark in commerce in 1876.” - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, by redirecting the Disputed Domain Name to a website that offers for sale products that compete with Complainant’s products under the BISELL Trademark, “Respondent has created a domain name that is confusingly similar to Complainant’s trademark,” “has demonstrated a knowledge of and familiarity with Complainant’s brand and business” and “it is not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered.” (Internal punctuation and citations omitted.) Further, “Respondent’s use of the Disputed Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii) because Respondent’s domain name is confusingly similar to Complainant’s trademarks and the Disputed Domain Name redirects Internet users to a third party website which offers and attempts to sell the products of Complainant’s competitor.” B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the BISSELL Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the BISSELL Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only ( i.e. , “bissellcommercialvacuum”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name ( e.g ., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 . It is obvious that the Disputed Domain Name contains the BISSELL Trademark in its entirety and simply adds the word “commercial” and “vacuum”. As stated in WIPO Overview 3.0 , section 1.7 , “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.” Further, “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” Yellow Corporation v. MIC , WIPO Case No. D2003-0748 . Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not commonly known by the name BISSEL”; “selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(iii)”; and “Respondent registered the Disputed Domain Name on June 17, 2017, which is significantly after Complainant filed for registration of its BISSELL trademark with the USPTO, SAIC and EUIPO, and also significantly after Complainant first started using its trademark in commerce in 1876.” WIPO Overview 3.0 , section 2.1 , states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.” The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). Here, Complainant specifically argues that bad faith exists pursuant to paragraph 4(b)(iii) of the Policy given that screenshots provided by Complainant associated with the Disputed Domain Name show that Respondent is, as Complainant states, “redirect[ing] Internet users to a third party website” where “Respondent offers and attempts to sell the products of Complainant’s competitors, which directly compete with Complainant’s own offerings.” The website associated with the Disputed Domain Name does not appear to be a traditional ecommerce site at which products are advertised and offered for sale. Instead, the website contains a lengthy article under the headline “The 10 Best Commercial Vacuums,” along with links to various brands of vacuum cleaners, including Sanitaire, Oreck, and Hoover. A note at the bottom of the website states that it is “a participant in the Amazon Services LLC Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to amazon.com or myhabit.com.” Accordingly, it is apparent that Respondent’s website is primarily designed to promote vacuum cleaners that compete with Complainant’s products and that Respondent is earning (or, at least, intending to earn) revenue in connection with the sale of such products. Respondent’s website associated with the Disputed Domain Name is, therefore, what could be called an “advertorial” website, that is, a website that blends advertising and editorial content. As one blogger has noted, with such websites, “it’s easy to cross the line into deception” by confusing readers into believing that the editorial content, rather than the advertising, is primarily driving the content creation. 1 Similar websites have been referred to as “splogs,” a term that combines the words “spam” and “blog.” See, e.g. , Fiberweb Geosynthetics Limited v. osa bun / Whois Privacy Shield Services , WIPO Case No. D2015-0048 . In any event, while Respondent may generally be free to publish an advertorial or splog website, using a domain name that is confusingly similar to Complainant’s BISSELL Trademark to do so is unnecessary and inappropriate and only serves to cause confusion. Specifically, using a domain name in this manner shows that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website […] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location,” creating bad faith under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 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 <bissellcommercialvacuum.com> be transferred to Complainant. Douglas M. Isenberg Sole Panelist Date: April 1, 2018 1 “The 14 Keys to Writing Advertorials That Sell,” CopyBlogger, https://www.copyblogger.com/writing-advertorials/ (visited April 1, 2018).
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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