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Generic Top Level Domain Name (gTLD) Decisions |
Brunswick Bowling & Billiards
Corporation v. Mr Billiard
Claim
Number: FA0409000328493
Complainant is Brunswick Bowling & Billiards
Corporation (“Complainant”), represented by Adesh Bhargava, of Dykema Gossett, PLLC, 1300 I Street, N.W., Suite 300 West,
Washington, DC 20005-3306. Respondent
is Mr Billiard (“Respondent”), 1515
Britannia Rd East Unit 18, Mississauga, ON Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <brunswickbilliard.com>, registered with Tucows
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 16, 2004;
the Forum received a hard copy of the
Complaint on September 21, 2004.
On
September 16, 2004, Tucows Inc. confirmed by e-mail to the Forum that the
domain name <brunswickbilliard.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
September 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 12, 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@brunswickbilliard.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
October 18, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <brunswickbilliard.com>
domain name is confusingly similar to Complainant’s BRUNSWICK mark.
2. Respondent does not have any rights or
legitimate interests in the <brunswickbilliard.com> domain name.
3. Respondent registered and used the <brunswickbilliard.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Brunswick Bowling & Billiards
Corporation, is a subsidiary of Brunswick Corporation, founded in 1845. Complainant is in the business of making
marine engines, pleasure boats, fitness equipment, as well as bowling and
billiards equipment. Complainant owns
several United States and worldwide trademark registrations for the BRUNSWICK mark
for products related to bowling
and billiards equipment (e.g. Reg. No. 807,709,
issued April 12, 1966 and Reg. No. 2,738,178, issued July 15, 2003). In addition to making bowling equipment and
supplies, Complainant operates more than 130 family bowling centers throughout
the United
States, Canada, Europe and Japan.
Respondent
registered the <brunswickbilliard.com> domain name on July 28,
2004 and is advertising the sale of the same goods as Complainant, such as
billiard tables for use in residential
and commercial establishments.
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
draw such inferences it 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.
Complainant has
established rights in the BRUNSWICK mark through registration with the United
States Patent and Trademark Office and
other countries throughout the
world. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently
distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <brunswickbilliard.com>
domain name is confusingly similar to Complainant’s BRUNSWICK mark because the
domain name incorporates the mark and merely adds
the generic term
“billiard.” The addition of the generic
term “billiard” is insufficient to distinguish the domain name from
Complainant’s mark, especially since
the term describes Complainant’s
business. See 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 Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business).
Furthermore, the
addition of the generic top-level domain “.com” to the mark is irrelevant in
determining whether the <brunswickbilliard.com> domain name is
confusingly similar to Complainant’s mark.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to provide a Response, the Panel accepts all reasonable
allegations and inferences in the Complaint as
true. See 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.”);
see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply
to the Complaint).
Furthermore,
Respondent has failed to contest the allegations of the Complaint; therefore,
the Panel presumes that Respondent lacks
rights and legitimate interests in the
<brunswickbilliard.com> domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name);
see also 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).
Complainant contends
that Respondent uses the <brunswickbilliard.com> domain name for
commercial gain because Respondent is selling goods similar to Complainant’s
goods. The Panel concludes that
Respondent’s use of a domain name confusingly similar to Complainant’s mark for
commercial gain does not
constitute 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 MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s
operation of website offering essentially the same services as Complainant
and
displaying Complainant’s mark was insufficient for a finding of bona fide
offering of goods or services).
Nothing in the
record establishes that Respondent is commonly known by the <brunswickbilliard.com>
domain name. Additionally,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known mark and did so for Respondent’s
commercial gain. Respondent’s domain name diverts Internet
users who seek Complainant’s products under the BRUNSWICK mark to Respondent’s
commercial
website through the use of a domain name that is confusingly similar
to Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s BRUNSWICK mark.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent
registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)
because Respondent was using the confusingly similar domain name to attract
Internet users to its commercial website);
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).
Furthermore,
Respondent registered the domain name for the primary purpose of disrupting
Complainant’s business by redirecting Internet
traffic intended for Complainant
to Respondent’s website that directly competed with Complainant. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and
Complainant were in the same line of business in
the same market area); see also Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that Respondent registered and used the domain name primarily for the purpose
of
disrupting the business of Complainant by offering personal e-mail accounts
under the domain name <openmail.com> which is identical
to Complainant’s
services under the OPENMAIL mark); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users
through to Respondent’s competing
business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED
Accordingly, it
is Ordered that the <brunswickbilliard.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 29, 2004
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