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Boxerjam, Inc. v. Ron Treakle [2001] GENDND 840 (26 April 2001)


World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boxerjam, Inc. v. Ron Treakle

Case No. D2001-0135

1. The Parties

Complainant: Boxerjam, Inc.

Charlottesville, Virginia, USA

Represented By: Hunton & Williams

Steven P. Demm, Esq.

John Gary Maynard, III, Esq.

Riverfront Plaza, East Tower

951 East Byrd Street,

Richmond, Virginia 23219, USA

Respondent: Ron Treakle

39245 Merrick Road, Suite 2831

Lynbrook, New York, USA

2. The Domain Name and Registrar

The Domain Name in dispute: "boxerjams.com".

The Registrar for the disputed Domain Name is:

Network Solutions, Inc. (NSI)

505 Huntmar Park Drive

Herndon, VA 20170-5139, USA

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy For Domain Name Dispute Resolution (the "Policy") and Rules (the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Center"; the "Supplemental Rules").

The Complaint was filed on January 24, 2001. Pursuant to the Center's request, NSI, on February 8, 2001, verified receipt of the Complaint and confirmed that NSI is the Registrar of the disputed domain name registration. NSI further reported to the Center that the registrant was the Respondent, Ron Treakle, and that the disputed domain name was active.

On February 23, 2001, the Center forwarded a copy of the Complaint to Respondent by post and e-mail and this proceeding officially began. Respondent did not file a response by March 14, 2001, as required by the Rules, and was declared to be in default on March 16, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence on March 23, 2001, and the Center proceeded to appoint the Panel on March 27, 2001.

This panel finds the Center has adhered to the policy and the rules of administering this case. This decision was due by April 10, 2001.

4. Factual Background

Complainant, Boxerjam, Inc., ("Boxerjam") is a Delaware corporation with an office in Charlottesville, Virginia. Boxerjam develops and delivers on-line skill games to computer users around the world and has registered BOXERJAM as a service mark in the United States. The Complainant's United States Service Mark Registrations were issued on October 17, 2000, and claim use since December 1995. Boxerjam also operates a website at the domain name "boxerjam.com".

Respondent, Ron Treakle registered the domain name "boxerjams.com" on November 7, 1999. Respondent did not file a response to the Complaint and has been declared in default in these proceedings.

5. Parties' Contentions

A. Complainant's Contentions:

  • Complainant was founded in 1995, and since then has become a leading developer in the on-line entertainment industry.

  • Complainant develops and delivers real-time, multi-player, on-line skilled games and related services to computer users around the world under the name and service mark BOXERJAM and through Complainant's "boxerjam.com" website.

  • Complainant's BOXERJAM word mark was registered at the United States Patent and Trademark Office as a service mark under Registration No. 2,395,489 issued October 17, 2000, in International Classes 9, 35 and 41. Use in each of these classes is claimed since December 1995.

  • Complainant has also registered a design form of the service mark BOXERJAM as United States Trademark Registration No. 2,395,488 issued October 17, 2000, in International Classes 9, 35, and 41. Use in each of these classes is claimed since December 1995.

  • Complainant also owns two ending United States Trademark Applications based upon intent to use the aforementioned two forms of the mark BOXERJAM in International Class 41.

  • Boxerjam has become recognized as a leader in the on-line game industry.

  • Complainant registered the domain name "boxerjam.com" on January 9, 1997, and actively uses that website.

  • Respondent has registered the domain name "boxerjams.com" in bad faith in order to cause confusion and divert consumers to sexually explicit websites.

  • Respondent's "boxerjams.com" domain name is confusingly similar to Complainant's "boxerjam.com" domain name, and Complainant's United States registered service marks.

  • Respondent has no legitimate use for a website with the domain name "boxerjams.com".

  • Respondent is not and never has been a representative of Complainant nor licensed or otherwise authorized by Respondent to use "boxerjams.com" or any other variant of Complainant's name and marks.

  • Respondent has intentionally attempted to attract for financial gain Internet users to respond to its website by creating a likelihood of confusion.

  • Respondent has given false information to NSI, which constitutes bad faith.

  • The domain name "boxerjams.com" should be transferred to Complainant.

    B. Respondent's Contentions:

    Respondent has failed to file a response to the Complaint and is in default. By failing to file a response, Respondent has not denied Complainant's contentions.

    6. Discussion and Findings

    In order for Complainant to prevail and have the disputed domain name "boxerjams.com" transferred to itself, Complainant must prove the following (Policy ¶ 4(a)(i-iii)):

    (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

    (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

    (iii) the domain name was registered and is being used in bad faith.

    Respondent's second level domain name "boxerjams.com" differs from Complainant's company name, registered service marks and domain name only in that the disputed second level domain name is plural. Otherwise, the Respondent's second level domain name is identical to Complainant's registered service marks, company name and domain name.

    This Panel finds Respondent's second level domain name "boxerjams.com" is confusingly similar to Complainant's registered service marks.

    This Panel further finds, based upon the evidence before it, that Respondent has no legitimate interest in the domain name.

    This Panel finds Respondent registered the domain name in bad faith because he had actual or constructive notice of Complainant's registered service marks and has no legitimate rights or interests in the disputed domain name. Furthermore, this Panel finds that Respondent was and is using the disputed domain name in bad faith based on Complainant's credible evidence that the use was and is for financial gain by linking the disputed domain name to pornographic websites. See MatchNet plc. v. MAC Trading, (Case No. D2000-0205) and Singapore Airlines, Ltd. v. Robert Nielson, (Case No. D2000-0644).

    7. Decision

    The Panel concludes that the domain name "boxerjams.com" is confusingly similar to Complainant's service marks, that the Respondent lacks any right or legitimate interest in the domain name and that the domain name was registered and used in bad faith. Therefore, this Panel orders that the disputed domain name "boxerjams.com" be transferred to Complainant, Boxerjam, Inc.

    Nels T. Lippert
    Sole Panelist

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