Bolia A/S v. Domain
Registrar
Claim Number: FA0803001163308
PARTIES
Complainant is Bolia A/S (“Complainant”) represented by Tina
Persson, of Chas Hude A/S,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bolia.us>, registered with Enom, Inc.
PANEL
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on March 12, 2008;
the Forum received a hard copy of the Complaint on March 17, 2008.
On March 12, 2008, Enom, Inc. confirmed by e-mail to the Forum that
the <bolia.us>
domain name is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 28, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 17, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On April 29, 2008, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Honorable Karl V.
Fink (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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <bolia.us> domain name is identical to Complainant’s BOLIA mark.
2.
Respondent does not have any rights or
legitimate interests in the <bolia.us>
domain name.
3.
Respondent registered and used the <bolia.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Bolia A/S, registered the BOLIA
mark with the European Union Office for Harmonization in the Internal Market
(“OHIM”) on June 27, 2003 (Reg. No. 1,903,517).
Complainant also registered the BOLIA.COM mark with OHIM on July 27,
2004 (Reg. No. 2,908,218).
Respondent registered the <bolia.us> domain name on January 19, 2006. Respondent has been using the disputed domain name to display links to other websites where unrelated products are marketed.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the
Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also 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.”).
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant registered the BOLIA mark with OHIM. In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel found that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction. The Panel considers Complainant’s registration with OHIM to be sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Complainant contends that the <bolia.us> domain name is identical to its BOLIA mark. The panel in Tropar Manufacturing Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) found that since the addition of the country-code “.us” failed to add any distinguishing characteristic to the domain name, the <tropar.us> domain name was determined to be identical to the complainant’s TROPAR mark. Here, the Panel also concludes that the generic top-level domain (“gTLD”) “.us” is not sufficient to distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <bolia.us> domain name is identical to its BOLIA mark under Policy ¶ 4(a)(i). See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the <bolia.us> domain name. Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests. The Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii). In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that, where the complainant asserted that the respondent had no rights or legitimate interests with respect to the domain name, it was incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.” Therefore, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] Policy ¶ 4(a)(ii).”).
Respondent has not responded to the Complaint. Previous panels have held that failure to respond allows a panel to presume that the respondent has no rights or legitimate interests in the disputed domain name. Although the Panel may presume that Respondent lacks all rights or interests in the <bolia.us> domain name, the Panel will examine all evidence in the record based on Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); 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 the respondent’s failure to reply to the complaint).
Because Respondent has not submitted a Response, there is no evidence showing that it is the owner or beneficiary of a mark that is identical to the disputed domain name. The Panel concludes that Respondent has not satisfied Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i).
The WHOIS information does not suggest that Respondent is commonly known by the <bolia.us> domain name, and Complainant has not indicated that it authorized Respondent to use the BOLIA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Tercent Inc. v. Lee 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 UDRP ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent is using the disputed domain name to display links to other unrelated websites where various products can be purchased. The Panel in Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) found that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. The Panel here also concludes that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
As previously stated, Complainant
asserts that Respondent is using the disputed domain name to display links to
other websites where various products can be purchased. Complainant contends, and Respondent does not
deny, that Respondent earns click though fees from each redirected Internet
user. The Panel finds that such use is
likely to create confusion as to the source, sponsorship, affiliation or endorsement
of the resulting website. Therefore, the
Panel finds Respondent’s registration and use of the disputed domain name to be
in bad faith pursuant to Policy ¶ 4(b)(iv).
See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May
19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bolia.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 7, 2008
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