Hobby Lobby beats typo-squatter after 22 years

Hobby Lobby Stores, Inc. v. Domain Admin / TotalDomain Privacy Ltd

Claim Number: FA2411002125092

PARTIES

Complainant is Hobby Lobby Stores, Inc. (“Complainant”), represented by Hunter D. Westfahl of Hobby Lobby Stores, Inc., Oklahoma, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd (“Respondent”), Panama.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is wwwhobbylobby.com, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

PANEL

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

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 14, 2024; Forum received payment on November 14, 2024.

On November 15, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the wwwhobbylobby.com domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@wwwhobbylobby.com. Also on November 15, 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 6, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is one of the largest retailers in the United States. Complainant sells its products via physical retail stores in 48 states and its website hobbylobby.com. Complainant registered the domain name hobbylobby.com in 1995. Complainant asserts rights in the HOBBY LOBBY mark through its registration in the United States in 2004, filing date June 18, 2003.

Complainant alleges that the disputed domain name is confusingly similar to its HOBBY LOBBY mark because it wholly incorporates the mark, and is only differentiated by the addition of the letters “www” and the “.com” generic top-level domain (“gTLD”).

According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not authorized to use Complainant’s mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name is used in bad faith as discussed below.

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns the mark HOBBYLOBBY, with rights dating back to June 18, 2003.

The disputed domain name was first registered on October 3, 2002; however its registrant appears to have changed several times since 2005.

Complainant has not licensed or otherwise authorized Respondent to use its mark.

The disputed domain name resolves to websites that offer products and services that are not related to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 relevant date for the mark HOBBY LOBBY is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). That date is June 18, 2003.

The disputed domain name incorporates Complainant’s HOBBY LOBBY mark in its entirety, merely adding the letters “www” and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has not authorized Respondent to use its mark in any way. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to identify a respondent. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the chevron-europe.com domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies Respondent as “Domain Admin / TotalDomain Privacy Ltd”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

The resolving websites offer products and services that are not related to those of Complainant. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), in general, 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.

The earliest date that Complainant puts forward for its trademark rights is June 18, 2003. According to the WHOIS, the disputed domain name was registered on October 3, 2002.

The WHOIS record was updated recently, however Complainant does not provide any evidence to the effect that Respondent was not the original registrant of the disputed domain name. The WHOIS “Updated Date” is often very recent, even for domain names that have been registered by the same registrant for a very long time.

According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.

Hence the fundamental question that the Panel must resolve is whether or not the current registrant had registered the disputed domain name prior to Complainant acquiring its trademark rights.

Complainant does not provide evidence that addresses this question.

As noted above, 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.”).

However, according to 4.8 of the cited WIPO Jurisprudential Overview 3.0, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. In particular, the Panel may consult historical resources.

In this case, the Panel was able to obtain a full historical WHOIS record for the disputed domain name via domaintools.com. It appears from that historical record that the registrant of the disputed domain name changed repeatedly after 2005.

Consequently, the Panel finds that Respondent did not merely renew a previous registration and it finds that Respondent’s registration is a new registration for the purposes of the instant proceedings. That registration took place after the Complainant acquired its trademark rights.

Therefore, the registration may have been made in bad faith in the sense of the Policy.

Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

Indeed, as already noted, the resolving websites promote products and services unrelated to Complainant’s business. Such use of a domain name can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); see also Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 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 wwwhobbylobby.com domain name be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist

Dated: December 6, 2024