Benchmadestore.com

The timeline behind benchmadestore.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Benchmade Knife Co., Inc. v. Xie Michelle Claim Number: FA2206002002174 PARTIES Complainant is Benchmade Knife Co., Inc. (“Complainant”), represented by Emma K. Morehart of Vorys, Sater, Seymour and Pease LLC, Ohio, USA. Respondent is Xie Michelle (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <benchmadestore.com>, registered with GoDaddy.com, 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. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on June 28, 2022; the Forum received payment on June 28, 2022. On June 29, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <benchmadestore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@benchmadestore.com. Also on June 30, 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. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. On July 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 1. Respondent’s <benchmadestore.com> domain name is confusingly similar to Complainant’s BENCHMADE mark. 2. Respondent does not have any rights or legitimate interests in the <benchmadestore.com> domain name. 3. Respondent registered and uses the <benchmadestore.com> domain name in bad faith. B. Respondent did not file a Response. FINDINGS Complainant, Benchmade Knife Co., holds a registration for the BENCHMADE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,932,859, registered Nov. 7, 1995). Respondent registered the <benchmadestore.com> domain name on May 16, 2021, and uses it to disrupt Complainant’s business by purporting sell Complainant’s goods. 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 Panel finds that Complainant has rights in the BENCHMADE mark through its registration with the USPTO. See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”) Respondent’s <benchmadestore.com> domain name uses the BENCHMADE mark and adds the term “store” and the “.com” gTLD. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety and adding a generic term is not sufficient to distinguish a domain name from a mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). The Panel finds therefore that Respondent’s <benchmadestore.com> domain name is confusingly similar to Complainant’s BENCHMADE mark. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). Complainant contends that Respondent lacks rights and legitimate interests in the <benchmadestore.com> domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed to Respondent any rights in the BENCHMADE mark. Respondent is identified as “Xie Michelle.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant also argues that Respondent does not use the <benchmadestore.com> domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Using a disputed domain name to offer unauthorized versions of Complainant’s goods does not qualify as a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”) Complainant demonstrates that Respondent uses the disputed domain name to impersonate Complainant and advertise and sell unauthorized goods and services of Complainant. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) and (iii). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant contends that Respondent uses the <benchmadestore.com> domain name to disrupt Complainant’s business in bad faith. Offering a complainant’s goods or services without authorization constitutes bad faith under Policy ¶ 4(b)(iii). See JUUL Labs, Inc. v. Domain Administrator / See PrivacyGuardian.org, FA2010001918554 (Forum Dec. 1, 2020) (“Registration of a confusingly similar domain name to pass off as a complainant and promote the sale of unauthorized products may evidence bad faith disruption of business per Policy ¶ 4(b)(iii) and/or bad faith attraction for commercial gain per Policy ¶ 4(b)(iv).”) The Panel finds that Respondent uses the disputed domain name to disrupt Complainant’s business by offering unauthorized versions of Complainant’s goods in bad faith under Policy ¶ 4(b)(iii). Complainant also argues that Respondent registered and uses the <benchmadestore.com> domain name to pass off as Complainant for its commercial gain in bad faith. The Panel agrees and finds that Respondent uses the disputed domain name to pass off as Complainant by copying Complainant’s website, displaying Complainant’s logo, and purporting to offer Complainant’s goods for sale, in bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 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 <benchmadestore.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: July 27, 2022 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.