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Bose Corporation v. Adplus Etc, S.A. [2004] GENDND 1013 (30 September 2004)


National Arbitration Forum

DECISION

Bose Corporation v. Adplus Etc, S.A.

Claim Number: FA0408000314279

PARTIES

Complainant is Bose Corporation (“Complainant”), represented by J. Kevin Gray of Fish & Richardson P.C., 1717 Main Street, Suite 5000, Dallas, TX 75201.  Respondent is Adplus Etc, S.A. (“Respondent”), Apdo. 4-092, Boquete, Chiriqua, PA.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <boseetc.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 18, 2004; the Forum received a hard copy of the Complaint on August 19, 2004.

On August 19, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <boseetc.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2004 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@boseetc.com by e-mail.

A Response was received on September 13, 2004, but was not in hard coy format.

An Additional Submission by Complainant was received on September 20, 2004.

On September 21, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant has established rights in the BOSE mark through its use in commerce since 1966, and through its registration of the mark with the United States Patent and Trademark Office (Reg. No. 829,402 issued May 30, 1967; Reg. No. 991,271 issued August 20, 1974; Reg. No. 1,297,699 issued September 25, 1984; Reg. No. 1,727,482 issued October 27, 1992; Reg. No. 1,738,278 issued December 8, 1992; Reg. No. 1,828,700 issued March 29, 1994; Reg. No. 1,830,727 issued April 12, 1994; and Reg. No. 2,288,004 issued October 19, 1999).

            2.            The domain name, <boseetc.com>, is confusingly similar to Complainant’s BOSE mark.  The only differences are the additions of a generic top-level domain (“gTLD”) “.com” and a generic or descriptive term, “etc,” which do not significantly distinguish the domain name from the mark.

           

            3.            Complainant’s use of its BOSE trademark long precedes the registration of the subject domain name by Respondent.  Moreover, in each and every instance, the registration date for Complainant’s federal trademark registrations for its BOSE mark also predates registration of the disputed domain name by Respondent.  Indeed, the first of Complainant’s BOSE registrations, Reg. No. 829,402 was issued more than thirty years prior to Respondent’s registration of the <boseetc.com> domain name, and had been incontestable for at least twenty years at the time of Respondent’s registration of the <boseetc.com> domain name.

            4.            Respondent has no rights or legitimate interests in the domain name <boseetc.com> because (1) Respondent is not the owner or beneficiary of any trademark or service mark that contains the term “bose” or “bose etc”; (2) Respondent has never been commonly known by the trademark or trade name “Bose” or “Bose Etc”; (3) the disputed domain name is merely the combination of Complainant’s trademark with a generic term; (4) Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; and (5) Respondent is making no legitimate noncommercial or fair use of the disputed domain name.

            5.            Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  In fact, the only use of the disputed domain name is as an Internet address for the website, advertising the unauthorized sale of Complainant’s products.  Complainant has strict control of the quality and commercialization of its products.  Complainant sells its product only through company-owned stores or dealers authorized by Complainant.  Respondent is not an authorized dealer for Complainant’s products, nor is the entity named at the website (Vertigo Online) an authorized dealer of Complainant’s products.  Thus, Respondent’s use of Complainant’s registered trademark BOSE in the disputed domain name and on Respondent’s website is not a bona fide offering of goods or services.

            6.            Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.  The website is a commercial website that advertises electronic and eletroacoustical products for sale; the website contains pricing information and ordering instructions for, among others, goods of Complainant that Respondent is not authorized to sell.  Respondent uses the disputed domain name for a website that sells unauthorized goods of Complainant.  Thus, Respondent is not engaged in legitimate noncommercial or fair use of the dispute domain name.

            7.            Respondent registered and is using the disputed domain name in bad faith because:  (1) Respondent knew or should have known of Complainant’s rights in the BOSE trademark prior to registered the disputed domain name; (2) Respondent acquired the disputed domain name for the purpose of diverting traffic to Respondent’s website and thereby disrupting Complainant’s business; (3) Respondent is using the disputed domain name to mislead consumers into believing that Respondent is associated with, sponsored by, or endorsed by Complainant; and (4) Respondent has engaged in a pattern of registering domain names reflecting the trademarks of others to prevent the trademark owners from reflecting their marks in corresponding domain names.

            8.            Complainant sells its products only through its company stores or dealers that have been authorized by Complainant.  Because Respondent is not an authorized dealer of Complainant’s goods, and has not otherwise been authorized by Complainant to use Complainant’s trademarks or sell Complainant’s goods, Respondent’s use of Complainant’s registered trademark in the disputed domain name for the purpose of the unauthorized selling of Complainant’s goods is a bad faith use of Complainant’s mark to divert traffic to Respondent’s website and to disrupt Complainant’s business.

B. Respondent

            1.            The <boseetc.com> domain name is not confusingly similar to Complainant’s BOSE mark because the domain name contains the generic word “etc.”

            2.            The use of the disputed domain name by Respondent is analogous to Asda Group Ltd. v. Kilgour, D2002-0857 (WIPO Nov. 11, 2002), because there is a clear and apparent difference in the name ending in “etc.”  The panel in the Asda case found, “Internet users will be well aware that a domain name with a ‘-sucks’ suffix does not have the approval of the relevant trademark owner.”  Thus, the use of the disputed domain name by Respondent is not confusingly similar to Complainant’s BOSE mark.

            3.            Respondent has rights and a legitimate interest in the <boseetc.com> domain name because it was making a legitimate noncommercial or fair use of the domain name without the intent to use it for commercial gain, to mislead consumers, or to tarnish Complainant’s mark.  Respondent merely used the disputed domain name to inform the public about Complainant’s products.

            4.            Complainant has failed to meet its burden of proving bad faith registration and use because Complainant has failed to point to particular facts and circumstances supporting its allegations.

            5.            Respondent did not register the <boseetc.com> domain name in bad faith, because the content of the attached website is exclusively informational.  The requisite bad faith at the time of registration, accordingly, is not present.

C. Additional Submissions by Complainant

            1.            Respondent’s website was a commercial website before notification of the dispute.  The website to which the disputed domain name resolved as of August 3, 2004, was clearly a commercial website that sold Complainant’s products without Complainant’s authorization.

            2.            Respondent changed its website after the Complaint was filed.  The Complaint was filed on August 18, 2004, and the Amended Complaint was filed on August 20, 2004, with a copy transmitted to Respondent by e-mail.  On August 20, 2004, Respondent sent an e-mail to the appointed Case Management Supervisor in this matter and Complainant’s counsel, stating that the website at the disputed domain name “is going to be taken down and a new website for non-commercial informational purposes will be replacing it.”  This statement alone demonstrates that Respondent knew its website was a commercial site.  As a result, Respondent did change its website after August 20, 2004.

            3.            The UDRP states at Paragraph 4(c)(i) that a respondent may demonstrate its “rights to and legitimate interests in the domain name” by showing “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…”  Thus, whether Respondent’s revised website is ultimately determined to be “informational, non-commercial use” as alleged by Respondent is irrelevant in determining Respondent’s rights and legitimate interest in the disputed domain name.

            4.            Respondent’s revised website is a commercial website.  Clearly, Respondent already receives, or at a minimum anticipates receiving, revenues from parties who contract with Respondent to advertise at Respondent’s revised website.  Accordingly, the revised website remains a commercial site, providing additional evidence of Respondent’s bad faith in registering the disputed domain name.

            5.            Complainant’s permission to use its intellectual property does not extend to uses made by Respondent.  Respondent alleges that Complainant “has publicly stated on their website that the pictures, information and use of their trademark name and logos are available to all non-commercial, informational websites.”  Respondent has purposely misinterpreted Complainant’s online limited authorization for Respondent’s improper purposes.  Complainant’s website Terms of Use contain the following restrictions on use:

Restriction on Use

Bose hereby authorizes you to copy documents established by Bose online for personal, noncommercial use within your organization only.  Such personal use does not include use of copyrighted content from this site for the unauthorized sale of Bose products or services.  In consideration of this authorization, you agree that any copy of these documents which you make shall retain all copyright and other proprietary notices contained herein.  This authorization does not include the use of images, logos or other content unless they are embedded within the documents.  (Emphasis added.)

            The limited permitted use contemplated by Complainant in its Terms of Use does not include the use of Complainant’s copyrighted materials and/or trademarks for any use that is not personal and noncommercial – such permitted use is limited to use within an organization and such contemplated use is not for the unauthorized sale of Complainant’s goods.  Furthermore, such authorization does not include use of Complainant’s trademarks unless the marks are embedded in documents.  Use of Complainant’s registered BOSE trademark in a domain name does not fall within the purview of the authority provided in Complainant’s online Terms of Use policy – such use is not personal, noncommercial, nor limited to use within an organization.

            6.            Respondent relies on the decision in Asda Group Ltd. v. Kilgour, D2002-0857 (WIPO, Nov. 11, 2002) to justify what Respondent terms “informational use” of Complainant’s trademark in the disputed domain name. The decision in Asda Group relates to the use of the suffix “sucks” attached to a registered trademark in the challenged domain name.  The Panelist in that action looked to the use of the specific term “sucks” to determine that no substantial number of people would be likely to be confused about the potential association of the domain name and Complainant.  The Panelist concentrated on the very specific pejorative “sucks” within the domain name at issue and stated “[t]he Panel believes that the Internet users will be well aware that a domain name with a ‘-sucks’ suffix does not have the approval of the relevant trade mark owner” in determining there was no likelihood of confusion in that case.  The reasoning behind the analysis of Asda Group is clear – no entity is likely to register and use a domain name that, in effect, denigrates that entity.  This reasoning cannot be applied to use of the suffix “etc.”  Use of “etc” is not pejorative.

FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.

A procedural issue first must be considered.

Respondent has not provided a Response that was received in hard copy format.  Thus, within the Panelist’s discretion, he may decline to consider Respondent’s deficient Response because it does not comply with UDRP Rule 5(b).  It is this Panelist’s choice, however, to consider all matters on the merits.  See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that “[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process”).

Substantively, as will be seen, the main thrusts of Respondent’s defense are that the disputed domain name is not confusingly similar to Complainant’s mark, and, moreover, that it is used for informational purposes only.

These defenses simply are not viable.

Identical and/or Confusingly Similar

The Panelist finds and determines that the disputed domain name is confusingly similar to Complainant’s mark.

This is because the only differences are the additions of a generic top-level domain (“gTLD”) “.com” and a generic or descriptive term, “etc,” which do not significantly distinguish the domain name from the mark.  See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Rights or Legitimate Interests

It is found and determined that prior to the initiation of this dispute, Respondent was using the disputed domain name to sell Complainant’s products.  Because Respondent was not authorized or licensed to sell the products, he was acting in bad faith, and without  legitimate interests or rights in the disputed domain name.

Moreover, Respondent’s contention that he has modified his website after the initiation of this proceeding is without merit.  Indeed, the findings of bad faith and no legitimate interest are supported by the modification.  See Int’l Info. Sys. Security Certification Consortium (ISC)2 V. Rifin d.o.o., FA 145282 (Nat. Arb. Forum Apr. 25, 2003) (noting that “[t]he modification of a website after the initiation of a dispute been found to demonstrate the lack of rights or legitimate interests.”) and  (finding Respondent to have bad faith where website was changed during the period after a Complaint was filed and before an amended Complaint was filed so that the website appeared to have a legitimate entity behind it); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that Respondent had no rights or legitimate interests where he decided to develop the website for sale of wall products after receiving Complainant’s “cease and desist” notice).  Thus, Respondent’s subsequent remedial measures to the website have no bearing on Respondent’s bad faith in registering the disputed domain name.  To the contrary, the evidence submitted by Complainant demonstrates Respondent’s bad faith as Respondent changed the website only after receiving notification from Complainant that a Complaint had been filed.

It appears also, and it is so found and determined, that Respondent will profit currently from its website using the disputed domain name.

Accordingly, it must be concluded that Respondent has no legitimate interests or rights in the disputed domain name.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[i]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website).

Registration and Use in Bad Faith

The Panelist finds and determines that Respondent registered and used the disputed domain name in bad faith under Policy Paragraph 4(b)(iv).

This is because Respondent has and is using the disputed domain name to attract intentionally, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name pursuant to Policy 4(b)(iv); see also 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb.23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods); see also Fanuc Ltd. v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Paragraph 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and Complainant).

Moreover, it is evident that Respondent registered the disputed domain name based on the distinctive and worldwide recognition of Complainant’s products and mark.  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 Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.  It is obvious that this is the case here.

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:

However, ISS became aware of the “EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 550 F.2d at 354.

Respondent’s charge of reverse domain name hijacking is without merit.

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 <boseetc.com> domain name be TRANSFERRED from Respondent to Complainant.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  September 30, 2004


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