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Bank of Ireland Securities Services Limited v. David Boissonnault [2004] GENDND 1121 (17 August 2004)

1. The Parties

The Complainant is Bank of Ireland Securities Services Limited, New Century House, International Financial Services Centre, Dublin, Ireland represented by Erin Plows, Head of Legal Affairs, Bank of Ireland Securities Services Limited, Ireland.

The Respondent is David Boissonnault, of Quebec, Canada.

2. The Domain Names and Registrar

The disputed domain names at issue <boiss.com> and <boiss.net> are registered with Wild West Domains, Inc., Scottsdale, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 12, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On May 12, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names at issue and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2004.

The Center appointed Wolter Wefers Bettink as the Sole Panelist in this matter on June 11, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has reviewed the Case File and noted that, although the Center has made efforts to notify Respondent of the filing of the Complaint, in the light of Respondent’s default, the Panel cannot be sure that actual notice was received. Although the Center did forward the Complaint to Respondent by courier and by email to three of Respondent’s email addresses, it did not forward the Complaint to two other email addresses of Respondent. Therefore on July 9, 2004, the Panel issued a Procedural Order in which it ordered that

1. the Center forwards the Complaint, and all other documents in this case, including this Order, to the Respondent by email at two other e-mail addresses not previously used.

2. the Respondent be given twenty (20) days, from the date of the Center’s email as noted under paragraph 1 above to submit its Response to the Center in accordance with paragraph 5(b) of the Rules, as well as any other submissions in response to the other documents generated in this case.

On July 12, 2004, in accordance with the Procedural Order of July 9, 2004, the Center formally notified the Respondent of the Complaint and the due date for its Response was August 2, 2004. The Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 8, 2004.

4. Factual Background

The company name of Complainant is BOISS. Complainant is also using BOISS as its trading name. Complainant has registered and is using the domain name <boiss.ie>.

The domain name <boiss.com> was registered by Respondent on May 12, 2003. The domain name <boiss.net> was registered by Respondent on May 14, 2003.

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant’s trademark, and

(ii) Respondent has no right of legitimate interests in respect of the domain name, an

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

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights of legitimate interests to the domain name for the purpose of Paragraph 4(a)(ii) above.

6. Parties’ Contentions

A. Complainant

The Complainant states in the Complaint that BOISS is a well-known company name and trading name for Complainant’s organisation. Complainant owns and uses the domain name <boiss.ie>. BOISS is well-known to the relevant client organizations and industry commentators in the international fund administration and custody industry. BOISS is a recognized company name for their international clients.

The grounds for the Complaint are:

(1) the domain names <boiss.com> and <boiss.net> are identical and/or confusingly similar to Complainant’s company and trading name and their domain name <boiss.ie>.

(2) Complainant states that Respondent has no rights or legitimate interests in respect of the domain names at issue. Respondent has not used or showed demonstrable preparations to use the domain names at issue in connection with the bona fida offering of goods and services. There is no proof that Respondent has been commonly known by the domain names at issue. Respondent is also not making a legitimate non-commercial fair use of the domain names <boiss.com> and <boiss.net>.

(3) Complainant further states that Respondent has registered and is using the domain names at issue in bad faith. Respondent’s primary purpose for these domain names is that of gaining financially from the likely confusion caused to Complaint’s clients by his registration of the domain names <boiss.com> and <boiss.net>. This follows from an email sent by Respondent to Complainant with the following text: “It’s been about 6-7 months since I’ve bought the domain <boiss.com> and I’m constantly receiving email addressed to your company members. These emails does not contain any critical data up to now but you maybe want to make a deal to get it back. reply ASAP.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

Complainant must provide evidence of all elements of Paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

A. Trademark rights

Paragraph 4(a) of the Policy requires that Complainant must prove that the domain names at issue are identical or confusingly similar to Complainant’s trademark. Paragraph 3(viii) of the Rules requires Complainant to specify the trademark(s) or service(s) mark on which the Complaint is based and, for each mark, to describe the goods or services, if any, for which the mark is used.

Complainant has brought forward that the domain names at issue are identical and confusingly similar to its company name, its trading name and their domain name <boiss.ie>. Although Complainant has not registered BOISS as a trademark, the Panel considers Complainant to be relying on common law rights to BOISS. Common law rights come into existence when a party can establish goodwill or reputation to a name. Complainant has provided sufficient evidence of the goodwill and reputation of BOISS among its relevant clients and within the industry.

Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights: Cedar Trade Associates v. Gregg Ricks (NEF 93633); Bennett Coleman & Co. Ltd v. Steven Lafwani, WIPO Case No. D2000-0014); Seek America Networks v. Tariq Masood, WIPO Case No. D2000-0131; Passion Group v. Usearsch (AF-0250); and David Gilmour v. Ermanno Senicolla WIPO Case No. D2000-1455.

The Panel therefore concludes that Complainant has provided sufficient evidence of its rights to the trademark BOISS.

B. Identical or confusingly similar

The domain names <boiss.com> and <boiss.net> are confusingly similar to Complainant’s trademark BOISS. The suffixes ‘.com’ and ‘.net’ only indicate that the domain names are registered in the .com and .net gTLD.

C. Rights or legitimate interests

Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances

“(i) 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

From the website Respondent is using under the domain names <boiss.com> and <boiss.net> it does not follow that he is using the domain names in connection with a bona fide offering of services, since Respondent is not (yet) offering any goods or services.

Respondent has, by not responding to Complaint, chosen not to provide any tangible evidence of any own right to the name ‘Boiss’. Although the first five letters of Respondent’s last name (Boissonnault) are identical to the indication ‘boiss’, this does not in itself create a right or a legitimate interest for Respondent in the domain names <boiss.com> and <boiss.net>. Complainant has provided evidence that there is no proof that Respondent has been commonly known by the indication ‘boiss’. Neither do the websites used by Respondent under the domain names <boiss.com> and <boiss.net> provide evidence that Respondent is commonly known by the name ‘boiss’.

In the light of the foregoing, the Panel finds that Respondent has no right or legitimate interest in the domain names at issue.

D. Registered and used in bad faith

Complainant is relying on Paragraph 4(b)(i) of the Policy, which provides that sufficient evidence of bad faith may consist of “circumstances indicating that Respondent has registered the domain name primarily for the purpose of selling or renting it to Complainant for a monetary consideration in excess of Respondent’s out-of-pocket expenses directly related to the domain name.”

The Panel finds that these circumstances are present here.

Respondent has sent Complainant an email with the following text

“It’s been about 6-7 months since I’ve bought the domain ‘boiss.com’ and I’m constantly receiving email addressed to your company members. These emails does not contain any critical data up to now but you maybe want to make a deal to get it back. Reply ASAP.”

Although no specific amount of money was asked for the domain names at issue in this email, the purpose of the email is apparently to offer the domain names for a consideration which exceeds the out-of-pocket registration costs. This indicates that Respondent’s primary purpose was to gain financially from the domain names at issue. This is underlined by the suggestion that Complainant might want to make a deal “to get [the domain name] back”, which indicates that Respondent is apparently aware that the domain name is or would be valuable to Complainant. The fact that Respondent suggests that he may receive emails with critical data in the future, (“these emails do not contain any critical data up to now”,) indicates that Respondent was aware of this value and was seeking to impress upon Complainant that, in order to safeguard the confidentiality of its communication with its clients, it had better purchase the domain names from Respondent. According to the Panel this constitutes evidence of Respondent’s bad faith.

The Panel, therefore, concludes that there is sufficient evidence that Respondent’s registration and use of the domain names <boiss.com> and <boiss.net> is in bad faith.

8. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request a transfer of the domain names <boiss.com> and <boiss.net> from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy the Panel orders the registration of the domain names <boiss.com> and <boiss.net> be transferred to Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: August 17, 2004