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Generic Top Level Domain Name (gTLD) Decisions |
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.
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.
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).
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).
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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