national arbitration forum

 

DECISION

 

Bose Corporation v. Vic Leo

Claim Number: FA1203001437029

 

PARTIES

Complainant is Bose Corporation (“Complainant”), represented by Michelle Brownlee of Bose Corporation, Massachusetts, USA.  Respondent is Vic Leo (“Respondent”), Belarus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enduratec.com>, registered with Spot Domain LLC d/b/a Domainsite.com.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 29, 2012.

 

On March 29, 2012, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <enduratec.com> domain name is registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the name. Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enduratec.com.  Also on April 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on April 25, 2012.

 

On April 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <enduratec.com> domain name is confusingly similar to Complainant’s ENDURATEC mark;

 

2.    Respondent does not have any rights or legitimate interests in the <enduratec.com> domain name;

 

3.    Respondent registered and used the <enduratec.com> domain name in bad faith.

 

B.  Respondent makes the following assertions:

 

1.    Respondent purchased the <enduratec.com> domain name from a <namejet.com> auction for a large sum;

 

2.    Respondent did not register and use the <enduratec.com> domain name in bad faith.

 

FINDINGS

Complainant has rights to the ENDURATEC mark, which it uses in connection with testing instruments.  The ENDURATEC mark (Reg. No. 2,587,261 registered July 2, 2002) was previously registered through the United States Patent and Trademark Office (“USPTO”), but the registration was cancelled on April 4,2009 by Complainant’s predecessor in interest.  Complainant re-registered the ENURATEC mark, intending to resume use of the mark (Reg. No. 4,102,677 filed June 27, 2008; registered February 21, 2012).

 

Respondent ‘s <enduratec.com> domain name resolves to a website that displays a replica of Complainant’s website from 2006, with the inclusion of a link to “viagra canadian pharmacy”, which offers medications.

 

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."

 

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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant states that it and its predecessor in interest, EnduraTEC Systems Corporation, used the ENDURATEC mark from February 1, 1993 onward, secured a USPTO trademark for the ENDURATEC mark (Reg. No. 2,587,261 registered July 2, 2002), and later canceled the mark when changing its name to “Electroforce.”  Complainant asserts that consumers continued to refer to the company and its products by the ENDURATEC mark and trade name.  Prior to the cancellation of the first ENDURATEC mark, Complainant filed for the re-registration of the ENDURATEC mark (Reg. No. 4,102,677 filed June 27, 2008; registered February 21, 2012) intending to resume use of the ENDURATEC mark, given the public’s association of the mark with the products and brand.  The Panel finds that Complainant has rights in the ENDURATEC mark pursuant to Policy ¶ 4(a)(i), given that the rights in the ENDURATEC never actually lapsed.

See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Respondent’s <enduratec.com> domain name is identical to Complainant’s ENDURATEC mark, as it merely adds the “.com” generic top-level domain (“gTLD”), irrelevant to a Policy ¶ 4(a)(i) determination.  See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Therefore, the Panel finds that Respondent’s <enduratec.com> domain name is confusingly similar under Policy ¶ 4(a)(i).

 

Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See  AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant states that Respondent is unrelated to Complainant and the WHOIS record for the <enduratec.com> domain name lists “Vic Leo” as the domain name registrant, not similar to the disputed domain name.  See 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 Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).  The Panel finds that Respondent is not commonly known by the <enduratec.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant asserts that Respondent uses the disputed domain name to display, in part, a link to a website which sells medications.  Respondent claims that it removed content from the website resolving from the <enduratec.com> domain name, but did not provide any supporting evidence.  Therefore, the Panel finds that Respondent’s display of a link unrelated to Complainant on the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding 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).

 

Complainant asserts that Respondent’s lack of rights or legitimate interests is further demonstrated by Respondent’s replication of the 2006 version of Complainant’s website.  The Panel agrees.  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).

 

Complainant states that the <enduratec.com> domain name was registered in March of 1997 by an employee acting on behalf of Complainant and its predecessor in interest.  Thus, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(iii) because it registered the disputed domain name, previously registered to the owner of the mark ENDURATEC.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).

 

Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent offered to sell the <enduratec.com> domain name to Complainant and that Complainant offered to pay a small sum to cover administrative expenses associated with obtaining the disputed domain name, to which Respondent did not reply.  Respondent claims it did not receive Complainant’s offer.  The Panel finds that it is more likely that Respondent was not happy with the offer and had the intent to sell the disputed domain name for an amount in excess of its out-of-pocket costs, an indication of bad faith.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

Respondent’s bad faith is further evidenced by its intent to attract Internet users to the <enduratec.com> domain name by diverting Internet users to its own website when they are seeking Complainant’s genuine website.  Respondent is not doubt compensated for the Internet users who are diverted through the links.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith for commercial gain pursuant to Policy ¶ 4(b)(iv).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).

 

Respondent attempts to trick Internet users into believing that the <enduratec.com> domain name is actually Complainant’s genuine website, a clear indication of bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).  Therefore, the Panel finds that Respondent is attempting to pass off as Complainant and thus registered and is using the <enduratec.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Respondent registered the disputed domain name long after the disputed domain name had been registered on behalf of Complainant and its predecessor in interest.  Previous panels have found that a respondent’s registration of a disputed domain name that formerly belonged to the complainant is evidence of bad faith.  See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).  Therefore, the Panel finds further evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant has satisfied Policy ¶ 4(a)(iii).

 

 

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 <enduratec.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Sandra J. Franklin, Panelist

Dated:  May 4, 2012

 

 

 

 

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