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BBA Holdings, Inc. v. Sanjay Sharma [2004] GENDND 789 (7 June 2004)

1. The Parties

The Complainant is BBA Holdings, Inc, of Fort Worth, Texas, United States of America, represented by Haynes and Boone, LLP, United States of America.

The Respondent is Sanjay Sharma, of Bombay, Maharastra, India.

2. The Domain Name and Registrar

The disputed domain name <bombayfurniture.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2004. On April 27, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On April 27, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 April 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2004.

The Center appointed Ross Carson as the sole panelist in this matter on May 26, 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.

4. Factual Background

The Complainant, a subsidiary of The Bombay Company Inc. (hereinafter “Bombay”), designs, sources and markets its home furnishings under its well-known marks BOMBAY, BOMBAY & design and THE BOMBAY COMPANY, through 400-plus retail outlets in the U.S. and Canada, and licensed international stores in Kuwait, The Dominican Republic, and Puerto Rico. Furthermore, in 2001, “Bombay” entered the children’s home furnishing market, and launched its BOMBAY KIDS line of specialty retail outlets. In addition to retail outlets, both THE BOMBAY COMPANY and BOMBAY KIDS offer products through specialty catalogs and the Internet in the U.S. and internationally.

The Complainant is the owner of a family of well-known registered trademarks for and including BOMBAY registered in relation to furniture, textiles and decorating accessories, games and decorative game boxes; retail store services for the sale of furniture and accessories in class 42; and for electronic retailing services via computer, retail store services and mail-order catalog services in the field of furniture and accessories in class 35. Copies of certificates of registrations of trademarks from 19 different countries for or including BOMBAY registered in association with the above-noted goods and services are marked as Annex 3 to the Complaint. The registrations include ten trademark registrations for or including BOMBAY in the United States of America and five registrations for or including BOMBAY in Canada registered in relation to the above-noted goods or services.

The Complainant, through its parent, Bombay, is also the registrant of the following domain names:

<www.bombaycompany.com>
<www.bombaycompany.org>
<www.thebombaycompany.com>
<www.thebombaycompany.net>
<www.bombayco.com>

Copies of the Whois records for these domain name registrations and first page of the “www.bombaycompany.com” website (which is the same first page for all of the registered domain names) are attached as Annex 6 to the Complaint. These websites promote “Bombay” throughout the United States and Canada (via a link its sister site www.bombaycompany.ca) and are accessible by customers globally.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name in dispute <bombayfurniture.com> is confusingly similar to the Complainant’s registered trademarks for or including BOMBAY. The domain name in dispute incorporates the Complainant’s well-known trademark in combination with the generic term furniture, the generic term for key products sold by the Complainant. The Complainant submits that the combination of BOMBAY with the generic term “furniture” is confusingly similar to the Complainant’s well-known trademarks and service marks. See Chanel, Inc. v Estco Technology Group, WIPO Case No. D2000-0413.

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name in dispute. The Complainant states that it has never authorized the Respondent to use a trademark or domain name incorporating the Complainant’s trademark BOMBAY. The Complainant further submits that nothing in the Respondent’s Whois information (Annex 1 to the Complaint) implies that the Respondent is commonly known by the domain name in dispute. The Respondent’s and the original registrant’s (Annex 8 to the Complaint) failure to respond to the Complainant’s Cease and Desist letters (Annex 10, 11 and 12 to the Complaint) further evidence the fact that the Respondent or the original registrant of the domain name in dispute has or had any rights or legitimate interests in the domain name in dispute.

The Complainant further submits that the Respondent has registered and is using the domain name in dispute in bad faith by intentionally attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Complainant relies on the following facts as evidence that the Respondent and its predecessor registered and used the domain name in bad faith. At the time of registration of the domain name in dispute, the Complainant’s trademarks for or including BOMBAY were well known in relation to furniture and services of selling furniture. The Respondent’s website, identified by domain name in dispute, provides a list of “popular searches” and “top sites related to Bombay Furniture,” beginning with a link entitled “The Bombaycompany” which connects to the Complainant’s website at “www.bombaycompany.com”. True and correct copies of what appeared on the website “www.bombayfurniture.com” on March 30, 2004, are provided as Annex 4. In view of the fact that the Respondent has not only registered a domain name that is confusingly similar to the Complainant’s marks, but has also provided a link to the Complainant’s website, users are likely to erroneously believe that the Respondent’s activities are sponsored or endorsed by the Complainant.

The Complainant further submits that by initially confusing users and drawing them to the Respondent’s website, the Respondent impermissibly capitalizes on the goodwill associated with the well-known trademarks of the Complainant for or incorporating the word BOMBAY extensively used in relation to furniture, retail and online stores offering furniture. This is especially true in view of the fact that following the link to the Complainant’s website are links to a potentially infringing website, “Bombay Furniture Products – Lowest Prices at DealTime,” and other sites offering competitive furniture and home accessories for sale, including “Bedroom Furniture,” “Furniture Store,” “ Furniture” Wrought Iron Tables,” Curio Cabinets,” and “Home Decorating.

Moreover, once a user enters the Respondent’s site, the user is faced with as number of “pop-up” advertisements, from which the Respondent likely derives advertising revenues. Certain pop-ups promote gambling website advertisers, and when the user attempts to escape the screen, the Respondent traps users with advertisements. True and correct copies of pop-up advertisements that appeared on the website “www.bombayfurniture.com” on March 30, 2004, are provided as Annex 5.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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 the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: and

(2) the 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. Identical or Confusingly Similar

The domain name <bombayfurniture.com> is confusingly similar to the Complainant’s well-known mark as it incorporates in its entirely the Complainant’s well-known trademark BOMBAY in combination with the generic term “furniture” descriptive of key products sold by the Complainant. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.

The Panel finds that the Complainant has proven that the domain name in dispute registered by the Respondent is confusingly similar to the Complainant’s well-known trademarks and service marks for or including BOMBAY.

B. Rights or Legitimate Interests

The Respondent failed to file a Response and evidence demonstrating it’s rights to and legitimate interests in the domain name in dispute pursuant to paragraph

4(c)(i),(ii) and (iii) of the Policy. The domain name in dispute was registered in the name of the current Respondent after a Cease and Desist letter had been forwarded to the previous Registrant. Cease and Desist letters delivered to the current Registrant at the current Registrant’s registered address were returned as DHL Worldwide Express could not locate the Respondent at the address provided. (Annex 14 to the Complaint). Several attempts to reach the Respondent using telephone and email addresses that were provided from the Respondent’s Whois information were also unsuccessful. The original registrant of the domain name in dispute was URL Pro 2000 who registered the domain name in dispute on June 23, 2000, (Annex 8 to the Complaint) well after the Complainant’s trademarks and service marks for or including BOMBAY had become well known. The original registrant transferred the domain name in dispute to the Respondent after receiving a Cease and Desist letter from counsel for the Complainant. The Respondent’s Whois contact information provides the Respondent’s address and email information which is false and misleading.

The contents of the offending website “www.bombayfurniture.com” as of March 30, 2004, (Annex 4 to the Complaint) contains links to the Complainant’s site and links to competitor’s sites offering furniture but no reference to any furniture business carried on by the Respondent. The Respondent’s website associated with the domain name in dispute also includes pop-up advertisements from which the Respondent likely obtains revenue. The Respondent has not demonstrated rights or legitimate interests in the domain name. The Complainant has provided evidence from which the Panel has inferred that the Respondent has no rights or legitimate interests in the domain name in dispute. The Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, constitutes evidence of bad faith registration and use.

The Respondent uses the <bombayfurniture.com> domain name to provide a link to the Complainant’s website as well as to websites of competitors who sell goods that compete with the Complainant’s goods, in particular furniture and home accessories (see Annex 4 to the Complaint). Internet consumers searching for information concerning the Complainant’s goods or services who are directed to the domain name in dispute are likely to become confused as to the Respondent’s sponsorship, affiliation or endorsement by the Complainant.

“The Bombay Company” is listed as a popular search term, which not only proves many people come to the website hoping to find the Complainant’s products, but underscores the fact that the Respondent is attempting to capitalize on the goodwill of the Complainant’s mark in order to generate traffic. Attempts such as these, to trade on the fame of another’s marks, clearly evidences the Respondent’s bad faith in the case at hand. The Respondent profits from the search engine, drawing web users looking for the Complainant’s goods or services to the website identified by the domain name in dispute. The Respondent also obtains profits from the pop-up advertisements at the website identified by the domain name in dispute.

As previously stated, upon receipt of the Complainant’s second Cease and Desist letter, attached as Annex 11 to the Complaint, the original registrant amended the registrant information in an effort to create an illusion of legitimate interest of the Respondent in the domain name in dispute. Specifically, the Respondent provided misleading and false Whois information with an address in Bombay, India which is nonexistent. When DHL attempted to deliver the letter dated November 4, 2003, to the Bombay address provided by the Respondent in his Whois information for the domain name, DHL was unable to do so as it could not locate the Respondent’s address, and the Respondent did not respond to DHL’s emails and phone calls. See, letter dated December 2, 2003, from DHL to Kathy Mettee of Haynes and Boone, LLP, attached as Annex 13, and Affidavit of Kathy Nettee, attached as Annex 14.

Providing and failing to correct, false contact details, in breach of the Respondent’s registration agreement, combined with the strong reputation of a complainant’s trademark, constitutes bad faith use of the offending domain name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Based on the evidence the Panel infers that Respondent was on notice of the Complainant’s rights in the BOMBAY trademarks and service marks when the Respondent registered the Domain Name. Registration of a domain name, despite knowledge of the Complainant’s rights, is evidence of bad faith registration pursuant to paragraph 4(a)(iii) of the Policy. American Express Co. v. (This Domain Is For Sale) Joshuathan Investments, Inc., FA 154647 (Nat Arb. Forum June 3, 2003).

The Panel finds that the Complainant has proven that the domain name in dispute has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bombayfurniture.com> be transferred to the Complainant.

Ross Carson
Sole Panelist

Date: June 7, 2004