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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FleetBoston Financial Corporation v. Albert Jackson
Case No. D2003-0915
1. The Parties
The Complainant is FleetBoston Financial Corporation, of Boston, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Albert Jackson, of George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <fleethomelinkfleet.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 November 17, 2003. On November 18, 2003, 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 November 18, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response. 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 November 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2003.
The Center appointed Jacques A. Léger as the sole panelist in this matter on December 31, 2003. 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 non-contradicted evidence submitted by Complainant is to the effect that:
- Complainant is the seventh largest financial holding company in the United States, with over US $190 billion in assets. Headquartered in Boston, Massachusetts, Complainant is a global financial company that provides a full line of personal and commercial banking and financial products and services to more than 20 million customers in more than 20 countries and territories around the world.
- Since at least as early as 1982, Complainant has been providing its banking and financial services under the mark FLEET and related marks all including the term FLEET. Complainant is the owner of approximately 90 plus trademarks and service marks containing the term FLEET for a wide array of diversified financial services. Complainant’s marks containing the term FLEET are referred to herein as the "Fleet Family of Marks". By way of example, Complainant owns, amongst many others, a United States Trademark registration for FLEET, Reg. No. 1,258,836, registered on November 22, 1983, in relation to Banking Services.
- Moreover, since at least as early as March 1996, Complainant and its predecessors in interest, Bank Boston and BayBank, have substantially, continuously and exclusively used, in connection with its business, the mark HOMELINK and related marks including FLEET HOMELINK, BANKBOSTON HOMELINK and BAYBANK HOMELINK.
- Complainant’s HOMELINK service permits its retail customers to, among other things, pay bills, transfer funds, check account balances and make payments on mortgages, loans and lines of credit via the Internet.
- Complainant owns pending United States Trademark Application No. 75/902,237 for the mark FLEET HOMELINK for "financial management, banking, bill payment, and investing services provided over a global computer network." Complainant has used its FLEET HOMELINK mark since at least as early as January 2000.
- As a result of substantial, continuous and exclusive use of the mark FLEET alone and composite marks incorporating the word FLEET, since at least as early as 1982, and use of the HOMELINK marks since at least as early as March 1996, Complainant has built up substantial value and goodwill in its FLEET and HOMELINK marks and the Fleet Family of Marks. Such goodwill extends throughout the United States and abroad.
- Over the past 20 years, Complainant has spent substantial amounts of money on advertising and promotion of its banking and financial services in the United States and abroad. Complainant advertises its services and transacts business with its customers through its website "www.fleet.com" and its branch and representative offices in twenty six (26) countries including, the United States, Singapore, Hong Kong, China, Indonesia, Japan and the United Kingdom.
- In 2002 alone, Complainant spent in excess of 70 million dollars on advertising its banking and financial services, including its FLEET and HOMELINK services, in the United States.
- Complainant has an active presence on the Internet. Complainant registered its <fleet.com> domain name on February 12, 1995, and has operated a website at the Internet address "www.fleet.com" since at least March 1996.
- Furthermore, Complainant uses its website to advertise its banking products and services and to communicate with its customers. Complainant’s website also allows its current and potential customers to learn about its various banking products and services and to access its HOMELINK service which permits Complainant’s customers to, among other things, pay bills, transfer funds and check account balances on the Internet. Complainant’s FLEET and FLEET HOMELINK marks are prominently displayed on the "www.fleet.com" website.
- Complainant’s customers, including its HOMELINK customers, can access their HOMELINK accounts through the home page of Complainant’s website located at "www.fleet.com" by clicking on the FLEET HOMELINK log-on icon. Complainant’s customers can also access their HOMELINK accounts directly by entering the domain name <fleethomelink.fleet.com> into their Internet browser.
- Subsequent to Complainant’s use of the FLEET, HOMELINK and FLEET HOMELINK marks and the Fleet Family of Marks, subsequent to Complainant’s registration and application for registration of the same, and without the consent of Complainant, Respondent registered the Internet domain name <fleethomelinkfleet.com> on September 9, 2003.
- Sometime after September 9, 2003, Respondent began using the domain name <fleethomelinkfleet.com> to point to a website on the Internet. Respondent’s website is a portal website that provides hyperlinks to several websites, which offer or advertise competing banking and/or financial services.
- The websites that Respondent provides links that include, ING Direct, a competing on-line bank, Rapid Quote, a website that permits consumers to receive quotes on refinancing and home equity loans from various participating lenders, "www.goapply.com", a website that provides services similar to Rapid Quote, Finance Resource Center, a website that provides advertisements for a variety of banks and financial service companies such as U.S. Bank and ING Direct, both of which are Complainant’s competitors, and Blowsearch, a website that contains links to the website of Complainant’s competitors such as Citibank and ING Direct.
5. Parties’ Contentions
The <fleethomelinkfleet.com> domain name is confusingly similar to Complainant’s FLEET, HOMELINK and FLEET HOMELINK marks, and the Fleet Family of Marks, because it incorporates, in its entirety, Complainant’s FLEET, HOMELINK and FLEET HOMELINK trademarks.
Numerous Panels have held that registration of a domain name, which incorporates,
in its entirety, a distinctive mark, creates sufficient similarity between the
mark and the domain name to render it confusingly similar. See for example Eauto,
LLC v. Triple S. Auto Parts et al., WIPO
Case No. D2000-0047; Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO,
WIPO Case No. D2000-0138; G.A. Modefine
S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424.
Confusion in this case is bolstered by the fact that Respondent’s domain name is virtually identical to Complaint’s direct link to its HOMELINK website, <fleethomelink.fleet.com>. The only difference between Fleet’s <fleethomelink.fleet.com> domain name and Respondent’s <fleethomelinkfleet.com> domain name is the omission of a period between "fleethomelink" and "fleet."
Based on Respondent’s registration of a domain name which incorporates Complainant’s FLEET, HOMELINK and FLEET HOMELINK marks and which is virtually identical to Fleet’s <fleethomelink.fleet.com> domain name and Complainant’s well known, long standing use of such marks and domain name, Respondent’s domain name <fleethomelinkfleet.com> is substantially similar to Complainant’s FLEET, HOMELINK and FLEET HOMELINK marks and the Fleet Family of Marks.
Rights and Legitimate Interest
Upon information and belief, the domain name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent. Respondent has not made a non-commercial, fair use of the domain name.
Respondent did not, prior to notice of this dispute, use the domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services. Indeed, Respondent is using the domain name to divert Internet traffic to its portal website that provides hyperlinks to websites of Complainant’s competitors or websites, which provide advertisements for, or links to Complainants’ competitors. The use of a confusingly similar domain name to divert Internet users is not a use in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use. See America On-Line, Inc. v. Ten Cent Comm. Corp., NAF Case No. 93668 wherein it was found that use of Complainant’s mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate".
Moreover, other Panels considering Respondent’s registration and use of other domain names containing well known trademarks or misspellings of trademarks of others for similar purposes have found that such conduct on the part of Registrant does not constitute a bona fide offering of goods or services or a legitimate non-commercial fair use. See for instance Dollar Rent A Car, Inc. v. Albert Jackson, NAF Case No. 187421 wherein Respondent’s use of <wwwdollarrentacar.com> to link consumers to the commercial websites of Complainant’s competitors while receiving a pay per click fee was not found to be a bona fide offering of goods or services nor a noncommercial fair use; see also Massachusetts Mutual Life Insurance Co. v. Albert Jackson, NAF Case No. 170518 (September 16, 2003) wherein Respondent’s use of <wwwmassmutual.com> was not found to be a bona fide offering of goods or services or a legitimate noncommercial fair use where the domain name was used to direct Internet traffic to a portal site offering pop up advertisements for services that competed with Complainant; see also U.S. Franchise Systems, Inc. v. Albert Jackson, NAF Case No. 162769 wherein it was held that Respondent’s use of <microtelmotel.com> to divert Internet users to Respondent’s site where Respondent received "kick backs" from website vendors who received visitors via Respondent’s website was not a bona fide offering of goods or services or a legitimate noncommercial fair use.
Complainant never authorized, licensed or otherwise permitted Respondent to use nor to apply to use its FLEET, HOMELINK or FLEET HOMELINK marks, its Fleet Family of Marks, or any confusingly similar variations thereof, or any domain name comprising or incorporating these marks.
Respondent’s registration and use of the domain name <fleethomelinkfleet.com> was done in bad faith primarily for the purpose of intentionally attracting for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
Respondent has registered a domain name, which encompasses Complainant's well known, and widely publicized FLEET, HOMELINK and FLEET HOMELINK marks. Moreover, Respondent’s domain name is merely a misspelling of Complaint’s <fleethomelink.fleet.com> domain name, which provides a direct link to its HOMELINK services. Respondent uses its <fleethomelinkfleet.com> domain name to attract Internet users who are looking for Complainant’s direct link to its HOMELINK services at <fleethomelink.fleet.com>, but merely mistype Complaint’s domain name by omitting the period between "fleethomelink" and "fleet," to its website.
Once at Respondent’s website, consumers looking for Complainant are faced with hyperlinks to several competing websites or websites that advertise for or contain links to Complainant’s competitors, such as U.S. Bank and ING Direct.
Upon information and belief, Respondent is receiving a commission or pay-per-click fee every time an Internet user is directed to the websites for which Respondent provides links to on its "www.fleethomelinkfleet.com" website.
Respondent’s unauthorized and unapproved redirection of consumers searching
for Complainant to its website containing hyperlinks to Complainant’s competitors,
some of whom provide Respondent with a commission for re-directed Internet traffic,
is solely for the purpose of achieving commercial gain. Such behavior has been
found by many other Panels to constitute bad faith registration and use. See
for instance NetWizards, Inc. v. Spectrum Enterprises, WIPO
Case No. D2000-1768 wherein it was found that registration and use of a
domain name to re-direct Internet users to websites of competing organizations
constitutes bad faith registration and use; see also Tarjeta Naranja SA v.
Mr. Dominio.com and Alejandro San Jorge, WIPO
Case No. D2001-0295 wherein it was held that to link Internet surfers looking
in their browsers for the well known mark of Complainant to a competitor’s website
is a typical bad faith use under the Policy.
Other Panels considering Respondent’s similar behavior with respect to other domain names found that Respondent’s registration and use of those domain names was in bad faith. See Massachusetts Mutual Life Insurance v. Albert Jackson, NAF Case No. 170518 wherein bad faith was found where Respondent used confusingly similar domain name to link users to websites completely unrelated to Complainant and U.S. Franchise Systems, Inc. v. Albert Jackson, NAF Case No. 162769, wherein bad faith was found where respondent received "kick backs" from website vendors who received visitors via Respondent’s confusingly similar domain name.
In addition, the mere act of "Typosquatting," or registering a domain
name that is a common misspelling of a mark in which a party has rights, has
often been recognized as evidence of bad faith registration and use. See for
example National Association of Professional Baseball Leagues v. Zuccarini,
WIPO Case No. D2002-1011 wherein it was
decided that "typosquatting is the intentional misspelling of words with
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently
parasitic and of itself evidence of bad faith." See also Medline, Inc.
v. Domain Active Pty., Ltd., NAF Case No. 139718 wherein it was stated that
"in typosquatting cases, such as this one, it would be difficult for Respondent
to prove to the Panel that it did not have actual knowledge of Complainant".
Further evidence of Respondent’s bad faith use and registration of the domain
name is the fact that Registrant has registered at least three other domain
names containing the famous or well known trademarks, or misspelling of trademarks,
of others including: <wwwdollarrentacar.com>, <wwwmassmutal.com>,
and <microtelmotels.com>. Respondent used these domain names in the same
manner as Complainant’s domain name, i.e., to link consumers looking for the
trademark owner to websites of their competitors, all for financial gain. Such
pattern of behavior establishes bad faith use and registration, as it was stated
in Inter-IKEA Systems B.V. v. Technology Education Center, WIPO
Case No. D2000-0522 and Bell-Phillip Television Productions v. Aford.,
WIPO Case No. D2000-0180.
Furthermore, due to the fact that Respondent’s domain name fully incorporates
Complainant’s FLEET, HOMELINK and FLEET HOMELINK marks, provides links to Complainant’s
competitors, and is virtually identical to Complainant’s <fleethomelink.fleet.com>
domain name, except for the omission of the period between "fleethomelink"
and "fleet," it can be inferred that Respondent had actual knowledge
of Complainant’s rights in its FLEET, HOMELINK and FLEET HOMELINK marks when
it registered its <fleethomelinkfleet.com> domain name. See Dollar
Rent A. Car, Inc. v. Albert Jackson, NAF Case No. 187421. Registration
of a domain name that infringes on Complainant’s rights, despite actual knowledge
of Complainant’s mark, is evidence of bad faith, as it was decided in The
Sports Authority Michigan, Inc. v. Domhold Co. a/k/a D’Vaul, NAF Case No.
135011 and Digi Int’l v. Digi Sys, NAF Case No. 124506, wherein it was
held that there is a legal presumption of bad faith when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or constrictively.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant must convince the Panel of three elements if it wishes to have the domain names transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the domain names are identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the domain names; and
(iii) that the domain names were registered and used in bad faith.
These three elements are considered below.
(i) Identical or Confusingly Similar
Rights in the Mark
The Panel is of the opinion that the evidence as submitted by Complainant supports a finding that Complainant is the owner of the registered trademark FLEET and that Complainant has rights in that mark.
As to the alleged mark FLEET HOMELINK, Complainant asserts that it, and its predecessors in interest, have used the mark since March 1996. Complainant further contends that through exclusive and continuous use of FLEET HOMELINK, it has acquired common law trademark rights in and to these marks.
Moreover, Complainant has, on January 27, 2000, filed a trademark application for the FLEET HOMELINK mark in the United States. Complainant has satisfactorily established that it uses the word in relation with its internet banking products and services, which it promotes through a website located at "www.fleet.com".
Although a pending application alone does not confer any rights in a mark according
to the Policy, UDRP Panel decisions have held that an application for registration
coupled with use in the United States gives a Complainant rights in the mark
for purposes of the UDRP. Adobe Systems Incorporated v. Domain OZ, WIPO
Case No. D2000-0057; Document Technologies, Inc. v. International Electronic
Communications Inc., WIPO Case No. D2000-0270.
For the foregoing reasons, the Panel finds that Complainant’s assertions of
it being a famous and well-known mark together with the extensive use of the
mark FLEET HOMELINK are sufficient to establish rights in the mark according
to the Policy.
The wording of Paragraph 4(a)(i) has been interpreted by numerous Panels in
the past to include both registered marks and common law marks (derived from
actual use). See inter alia, The British Broadcasting Corporation
v. Jaime Renteria, WIPO Case No. D2000-0050;
United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO
Case No. D2002-0005, The Professional Golfers’ Association of America
v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO
Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic
Sites, Inc. NAF Case No. FA095560. However, in order to rely on an unregistered
mark, Complainant must establish that the mark has been in continuous use and
that the mark has achieved secondary meaning ("distinctive character")
in association with the Complainant (see Museum of Science v. Asia Ventures,
Inc., WIPO Case No. D2003-0691).
Complainant also affirms that the mark FLEET HOMELINK is prominently displayed on its "www.fleet.com" website. Panel, proprio motu, visited the website located at that address an found that the word HOMELINK was in fact abundantly displayed on several pages, with the sm acronym well exposed and accompanied by the statement that: "Fleet HomeLink is a service mark of FleetBoston Financial Corporation".
In view of all the above, the Panel finds that Complainant has satisfactorily established that it owns rights in the unregistered mark FLEET HOMELINK.
While the domain name is not identical to Complainant’s FLEET and FLEET HOMELINK marks considered alone, the Panel finds that it is confusingly similar, since the domain name is in fact comprised of the two trademarks juxtaposed to one another. The test of confusion in comparing the words or marks at issue is from the standpoint of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
Moreover, the domain name varies from Complainant’s Internet address <fleethomelink.fleet.com>
merely by deleting a period between the first part "fleethomelink"
and the second "fleet". It is trite law that the mere omission of
a punctuation mark does not preclude a finding of confusing similarity. Although
the facts were not identical to those of the case at hand, the Panel adopts
the findings in Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO
Case No. D2001-1199 wherein it was stated that "it is clear that, in
fact, the Respondents are endeavoring to "typosquat" Pfizer’s main
domain name <www.pfizer.com>, assuming that users will neglect to include
the period between the third and second level domain names". See e.g. InfoSpace.com,
Inc. v. Registrar Administrator Lew Blanck, WIPO
Case No. D2000-0069; Microsoft Corporation v. Stoneybrook, WIPO
Case No. D2000-1274; Bayer Aktiengesellschaft v. Yongho Ko, WIPO
Case No. D2001-0205. In fact, Respondent’s typo squatting does not remove
the confusing similarity, see Ultimate Electronics, Inc. v. Phayze, Inc,
WIPO Case No. D2002-0851.
The Panel therefore finds that Complainant has satisfactorily met the burden imposed upon it at Policy Paragraph 4(a)(i).
(ii) Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain dame. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Panel agrees with Complainant’s contention that Respondent has no rights or legitimate interests in the domain names.
First, there is no relationship between the parties giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating Complainant’s mark.
Second, the Panel agrees with Complainant in that there is no evidence that Respondent has been commonly known by the domain name, nor that the domain name comprises the legal name of Respondent. In fact, since when typing in the domain name, the Internet user is automatically directed to a website leading to several hyperlinks to websites of Complainant’s competitors or websites which provide advertisements for or links to Complainant’s competitors, it is the Panel’s opinion that the Respondent has not been commonly known by the domain name.
Third, the fact that the Respondent uses the domain name to divert Internet users for its own benefit and profit to its portal website that provides hyperlinks to websites of Complainant’s competitors or websites which provide advertisements for or links to Complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names. The Panel relies on the findings expressed in America On-Line, Inc. v. Ten Cent Comm. Corp., NAF Case No. 93668 wherein it was found that use of Complainant’s mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate".
Moreover, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com",
WIPO Case No. D2000-0847, the panel observed
that, "use which intentionally trades on the fame of another can not constitute
a bona fide offering of goods or services. To conclude otherwise would
mean that a Respondent could rely on intentional infringement to demonstrate
a legitimate interest, an interpretation that is obviously contrary to the intent
of the Policy." In Advance Magazine Publishers, Inc. v. Lisa Whaley,
WIPO Case No. D2001-0248, the panel
construed this to mean that "intentionally infringing use should not be
viewed as bona fide use."
Fourth, although not contended by Complainant, the Panel finds a negative inference
from Respondent’s failure to respond which points to corroborate the evidence
submitted by Complainant that Respondent lacks rights or legitimate interests
in the disputed domain names. In this regard, the Panel refers to its decision
in Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO
Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate
rights or interests has been alleged by a complainant, the respondent is obliged
to adequately address this issue. This finding is supported by the various means,
which are available to a respondent under the Policy to show legitimate right
or interest, on a balance of probabilities.
Therefore, the Panel, relying on MatchNet plc. v. MAC Trading, WIPO
Case No. D2000-0205, wherein: "The Administrative Panel, as permitted
by paragraph 14(b) of the Rules, draws the inference from the respondent’s
failure to respond to this administrative proceeding, that the complainant is
correct in its assertion that the respondent has no rights or legitimate interest
in the domain name" finds that the complainant has established prima facie
that the respondent lacks rights or legitimate interests and therefore has successfully
met its second burden, under Policy paragraph 4(a)(ii). See also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., WIPO
Case No. D2000-1221 wherein it was found that: "Respondents’ failure
to respond can be construed as an admission that they have no legitimate interest
in the domain names."
The Panel thus finds that Complainant has met its burden under Policy Paragraph 4(a)(ii).
(iii) Registered and Used in Bad Faith
It is often quite difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be assimilated to bad faith.
The Panel’s understanding of the Policy is that although the initial burden to prove the Respondent’s bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of the Complainant and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.
In the present case, the Panel finds that, since Complainant’s trademark FLEET
is federally registered, it is very unlikely that when Respondent registered
the domain names, it was not aware that it was infringing on Complainant’s trademark
rights (see e.g. Expedia, Inc. v. European Travel Network,
WIPO Case No. D2000-0137 and Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003). See also Digi Int’l v. Digi Sys, NAF Case No.
124506 wherein it was held that there is a legal presumption of bad faith when
Respondent reasonably should have been aware of Complainant’s trademarks, actually
Furthermore, the Panel is of the opinion that the domain name is so obviously
connected with Complainant’s trademarks that its very use by someone with no
connection with the Complainant suggests "opportunistic bad faith"
(See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226 and Veuve
Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163.
Moreover, the Panel finds that the evidence, as submitted by Complainant, tends
to demonstrate that Respondent registered the domain name with the purpose of
intentionally attempting to attract, for its own commercial benefit, Internet
users to its website by creating a likelihood of confusion with Complainant’s
trademark and by using the goodwill and positive reputation attached to the
Complainant’s FLEET trademark. See Snapple Beverage Corp. v. Telmex Management
Services, WIPO Case No. D2002-0114.
Finally, the Panel took note of the fact that several UDRP complaints have been filed against the Respondent; these decisions, absent evidence to the contrary by Respondent, tend to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks.
As in these other UDRP cases, in this case Respondent has registered a domain name that is a close variation of famous trademarks. Respondent has linked this domain name to a website that is likely to confuse the Internet user as to the distinction between Complainant and Respondent’s goods and services, whatever they may be. Respondent also uses the domain name in a manner that tarnishes the goodwill associated with the Complainant and its service mark.
In view of all the above, the Panel is of the opinion that the Complainant has discharged of its burden under Policy paragraph 4(a)(iii), and finds that the Respondent has registered and used the domain names in bad faith.
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, <fleethomelinkfleet.com> be transferred to the Complainant.
Jacques A. Léger
Dated: January 14, 2004