DECISION

Borders Properties, Inc. v. Ian Hewitt

Claim Number: FA0206000114618

PARTIES

Complainant is Borders Properties, Inc., Ann Arbor, MI, USA (“Complainant”) represented by David R. Haarz, of Dickinson Wright, PLLC.  Respondent is Ian Hewitt, Applecross, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <borderscom.com>, registered with Melbourne IT.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 12, 2002; the Forum received a hard copy of the Complaint on June 17, 2002.

On June 18, 2002, Melbourne IT confirmed by e-mail to the Forum that the domain name <borderscom.com> is registered with Melbourne IT and that Respondent is the current registrant of the name.  Melbourne IT has verified that Respondent is bound by the Melbourne IT registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@borderscom.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.”  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

The <borderscom.com> domain name is confusingly similar to Complainant’s BORDERS mark.

Respondent has no rights or legitimate interests in the <borderscom.com> domain name.

Respondent registered and used the <borderscom.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the BORDERS mark since 1971 to identify its retail bookstores.  Complainant has grown into the second largest operator of bookstores in the world, according to sales and number of stores.  In efforts to promote its bookstores, Complainant spends millions of dollars each year advertising its BORDERS mark.  Consequently, Complainant’s BORDERS mark is well-known and has gained a significant amount of goodwill throughout the world. 

The United States Patent and Trademark Office recognized Complainant’s rights in the BORDERS mark by issuing registered trademarks to Complainant (Reg. Nos. 1,792,079 and 2,044,230).  Complainant also owns Australian Registration Nos. 613578 and 706042 for the BORDERS mark, which is where Respondent is located. 

Respondent registered the <borderscom.com> domain name on November 25, 1999.  Respondent uses the domain name as an address for a website that contains links to Barnes & Noble, Amazon.com, and <universityoflife.com>.  Complainant claims that the last link is a website owned and operated by Respondent.  Barnes & Noble and Amazon.com conduct business in competition with Complainant. 

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established rights to the BORDERS mark through proof of trademark registration in the United States and Australia, along with demonstrating continuous use of the mark since 1971.

Respondent’s <borderscom.com> domain name contains Complainant’s entire BORDERS mark with the addition of “com” in the second level domain and the inconsequential addition of the generic top level domain “.com.”  The added “com” does not defeat a confusing similarity claim because it takes advantage of a common typographical error.  It is a basic mistake to type “com” twice without typing the period after the targeted search term, in this case BORDERS.  Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no legitimate interests or rights in the <borderscom.com> domain name and Respondent’s failure to respond, it may be presumed that Respondent has no such rights in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Furthermore, in absence of a Response, the Panel may draw all reasonable inferences in favor of Complainant.  See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <borderscom.com> domain name to connect to a website that features links to Barnes & Noble, Complainant’s primary competitor, and Amazon.com, which also conducts business in competition with Complainant.  The website that <borderscom.com> resolves to also contains a link to <universityoflife.com>, which Complainant asserts to be Respondent’s main website.  Respondent has not come forward to explain its actions or to refute that it operates the <universityoflife.com> website. Therefore, Complainant has affirmatively established that Respondent uses the <borderscom.com> domain name to link to Complainant’s competitors and other businesses.  It may be presumed that Respondent’s actions are done for commercial gain.  Thus, Respondent’s use of the <borderscom.com> domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate or noncommercial fair use pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Complainant’s BORDERS mark is internationally well-known, which creates a presumption that no one else operates under the same or similar name.  Respondent is not commonly known by BORDERSCOM or the <borderscom.com> domain name.  Furthermore, Complainant never licensed or gave Respondent any permission to use the BORDERS mark.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <borderscom.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The list of bad faith circumstances, presented in Policy ¶ 4(b), does not represent an exhaustive set of bad faith circumstances.  The Panel must look at the totality of circumstances when determining whether Respondent has registered or used a domain name in bad faith.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

It is apparent that Respondent had knowledge of Complainant’s rights in the BORDERS mark prior to registering the <borderscom.com> domain name because of the mark’s notoriety, Complainant’s registration of the mark in Respondent’s home country, Australia, and Respondent’s use of the mark as a link to Complainant’s competitors.  Therefore, Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent’s use of the <borderscom.com> domain name to divert Internet users to a website that contains links to Complainant’s competitors’ commercial book selling websites represents bad faith under Policy ¶ 4(b)(iv).  Respondent’s behavior creates a likelihood of consumer confusion as to Complainant’s affiliation with the <borderscom.com> website.  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <borderscom.com> be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 23, 2002

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