DECISION

Boatpix.com, Inc. v. Cindy Patnode a/k/a Patnode Technology and Boatpics.com

Claim Number: FA0212000135610

PARTIES

Complainant is Boatpix.com, Inc., West Palm Beach, FL (“Complainant”) represented by Jay Sanchelima, of Sanchelima & Associates, P.A.  Respondent is Cindy Patnode and Boatpics.com, Newport News, VA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <boatpics.com>, registered with Bulkregister.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 4, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <boatpics.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name.  Bulkregister.com, Inc. verified that Respondent is bound by the Bulkregister.com, Inc. 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 December 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@boatpics.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 January 6, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations:

The  <boatpics.com> domain name is confusingly similar to Complainant's BOATPIX mark.  Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant has used the BOATPIX mark since 1992 in relation to its aerial photography services for boats.  Complainant registered the BOATPIX mark with the United States Patent and Trademark Office as Registration Number 2,394,460 on June 9, 2000.

Respondent registered the disputed domain name on February 17, 1999.  Respondent is currently using the disputed domain name to display a coming soon website that states “Will be coming soon, in the meantime: You may search for Boat Pics Here.”  If an Internet user clicks on the link he or she is redirected to a mousetrap of advertisements from various Internet vendors.  Respondent’s website also features a search engine for low cost airplane fares. 

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BOATPIX mark through registration with the United States Patent and Trademark Office and continuous use since 1992.

The domain name registered by Respondent, <boatpics.com>,  is confusingly similar to Complainant’s mark because it is phonetically identical.  The disputed domain name merely replaces the “x” of Complainant’s BOATPIX mark with a “cs,” a letter combination that sounds exactly the same.  Internet users looking for Complainant who may not know the unique spelling of Complainant’s mark could easily mistake Respondent’s domain name for one sponsored by Complainant.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name that is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).

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

Rights to or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to respond, the Panel is permitted to presume that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Had Respondent filed an appearance, Respondent might have been able to give the Panel an explanation to establish rights in the name inasmuch as Respondent registered the name prior to Complainant’s trademark registration.  Instead, the Panel relies on Complainant’s submission that meets Complainant’s burden of showing rights and interests in the name.  In addition, Respondent has held the domain name since 1999 and Respondent’s sole use of the disputed domain name is to display a website that states: “Will be coming soon, in the meantime: You may search for Boat Pics Here.”  The Internet user following the link is then accosted with numerous pop-up advertisements.  Respondent has held the disputed domain name since 1999 but has failed to develop a website beyond this “coming soon” website and link.  This use is not considered to be in connection with 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 LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

No evidence on record suggests and Respondent has not come forward with evidence that would constitute proof establishing that Respondent is commonly known as BOAT PICS or <boatpics.com>.  The Panel therefore, finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

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

Registration and Use in Bad Faith

Respondent has made no use of the domain name other than to display a “coming soon” website, a search engine tool bar and a link to pop-up advertisements.  The Panel is permitted to infer in such circumstances that Respondent profits from the Internet traffic diverted to these advertisements.  Based on the fact that Respondent has held the domain name for three years and has failed to develop any other use for the disputed domain name, the Panel may infer that Respondent does not intend to use <boatpics.com> for any purpose other than to cause Internet confusion for its own commercial gain.  Respondent’s behavior is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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 <boatpics.com> TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 20, 2002.

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