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and Mediation Center
Bits & Pieces, Inc. v. Banter Incorporated
Case No. D2005-0881
1. The Parties
The Complainant is Bits & Pieces, Inc., d/b/a Bits & Pieces, Allston, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, Boston, Massachusetts, United States of America.
The Respondent is Banter Incorporated, Coral Springs, Florida, United States
2. The Domain Name and Registrar
The disputed domain names are <bitasndpieces.com> and <bitsnadpieces.com>.
The registrar is Wild West Domains, Inc., Scottsdale, Arizona.
3. Procedural History
This action (the “Complaint”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on August 17, 2005. On August 18, 2005, the Center transmitted by e-mail to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On August 19, 2005, Wild West Domains, Inc. transmitted by e-mail 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 ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, (the “Policy”); the ICANN Rules for Uniform Domain Name Dispute Policy, dated October 24, 1999, (the “Rules”); and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO 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 August 24, 2005. A copy of the Complaint with attachments was sent to Respondent on this date by e-mail and a hard copy by Federal Express. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September 16, 2005. The Respondent was advised of the consequences of such a default.
The Center appointed John E. Kidd as the sole panelist (the “Panel”) in this matter on September 26, 2005. 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.
Having reviewed the communication records, the Panel
finds that the Center has discharged its responsibilities under paragraph 2(a)
of the Rules “to employ reasonably available means calculated to achieve
actual notice to Respondent.” In the view of the Panel, the proper procedures
have been followed and its may issue its decision based upon the documents submitted
in accordance with the Policy, the Rules and the Supplemental Rules without
the benefit of a response from the Respondent.
4. Factual Background
The Panel draws the following facts from the Complaint. For more than twenty (20) years, Complainant has provided consumers with a wide assortment of jigsaw puzzles, toys, brain teasers, games, gift items, dolls, coin banks, novelty lightings and related items (the “product line”) through its mail order catalog, BITS AND PIECES, and, more recently, through its on-line catalog of same name located at its web-site <bitsandpieces.com>. Millions of consumers have shopped and purchased from Complainant’s mail order and on-line catalogs.
Since 1983, Complainant has substantially, continuously and exclusively used the mark BITS AND PIECES or a slight variation thereof, such as BITS & PIECES in connection with its business. Complainant applied on September 20, 1991 to register the mark BITS AND PIECES in the United States for mail order services of its product line, based on first use on October 3, 1983. Complainant has also applied on February 10, 2005 to register the mark BITS AND PIECES in the United States for its product line and a variety of other goods based on use dating back to 1993. Complainant requested its own domain name <bitsandpieces.com> in 1995, and it established its own web-site in 1998.
Through Complainant’s efforts over the past twenty years, it has established a strong customer base as a provider of a quality product line through its mail order and on-line catalog services. Complainant has spent a considerable sum of money on advertising and promoting its mark BITS AND PIECES and it has an active presence on the internet.
On or about December 27, 1995, Complainant registered its <bitsandpieces.com> domain name and has operated a web-site at this internet address that featured the mark BITS AND PIECES, since at least as early as January 1999. In order to increase its presence on the internet, Complainant has established and implemented an affiliate program. In general, the program is an agreement between two e-commerce web-sites where one site, an affiliate, advertises and provides a link to Complainant web-site. The affiliate is paid a commission for every sale that is made by a consumer that the affiliate refers to Complainant’s web-site.
Long subsequent to Complainant’s first use of
mark, BITS AND PIECES, in 1983, registration in the United States of mark, BITS
AND PIECES, in 1992, and establishment of its <bitsandpieces.com> web-site
in 1995, Respondent registered the domain names in dispute on June 2, 2005.
Sometime after June 2, 2005, Respondent activated its domain names web-sites
and began receiving commissions from Complainant when consumers mistyped the
BITS AND PIECES name. From the evidence presented it appears that Respondent
did not apply for Complainant’s affiliate program.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied. More specifically, Complainant submits that (i) the domain names in dispute are confusingly similar to Complainant’s BITS AND PIECES mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests with respect to the domain names in dispute; and (iii) the domain names in dispute were registered and are being used by Respondent in bad faith.
The Complainant also contends that Respondent is not commonly known by either one of the domain names in dispute, and it is not using the domain names in connection with a bona fide offering of goods or services.
The Complainant contends that Respondent, unlike a legitimate affiliate of Complainant, does not maintain a web-site that contains a link to Complainant’s web-site, but rather, it uses the domain names in dispute to instantaneously re-direct consumers who mistype Complainant’s domain name and /or mark through a series of web-sites to Complainant’s web-site and collects a fraudulent commission for each time a mis-typing occurs.”
Complainant also asserts that Respondent had actual knowledge of Complainant’s domain name and marks and registered and used the domain names in dispute in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.A Identical or Confusingly Similar Domain Name
Complainant has shown that it owns the marks, BITS AND PIECES and BITS & PIECES, in the United States and the domain name <bitsandpieces.com>.
The only difference between Respondent’s domain names in dispute and Complainant’s mark and domain name is that Respondent has transposed letters in the word “and.” This action often results from common typing mistakes made by internet users when entering Complainant’s mark or domain name into an internet browser.
Based on the foregoing, the Panel finds that the domain
names in dispute are confusingly similar to Complainant’s mark and domain
name. See Red Bull GmbH. v. Grey Designs, WIPO
Case No. D2001-1035; Playboy Enterprises International, Inc. v. Sand
Web Names for Sale, WIPO Case No. D2001-0094;
and Telstra Corporation, Ltd. v. Warren Bolton Consulting Pty., Ltd.
WIPO Case No. D2000-1293. Therefore, the
Panel finds that the requirements of paragraph 4(a)(i) of the Policy has been
established and satisfied by Complainant.
6.B Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute.
The Respondent did not register the domain names in dispute until June 2, 2005, long after the Complainant’s first use and registration of its marks in the United States and after Complainant created its own domain name web-site. The Respondent’s name is BANTER INCORPORATED a name which has no similarity to the domain names in dispute.
The Panel finds that Complainant, except as provided in its standard affiliate agreement, has never authorized, licensed or otherwise permitted Respondent to use the domain names in dispute in a typo-squatting manner. The Respondent has provided no evidence or circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interests in the domain names in dispute nor has the Respondent provided any evidence that the domain names in dispute were used in connection with any bona fide offerings of goods or services. Therefore, the Panel finds that the Respondent does not have legitimate rights or interest in the domain names in dispute.
The Panel finds that Respondent is using the domain names in dispute to instantaneously re-direct internet traffic to Complainant’s web-site, but unlike a legitimate affiliate of Complainant, Respondent does not maintain a web-site that contains a link to Complainant’s on-line catalog. The Panel finds that such behavior is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of Complainant’s mark or domain name. See Register.com, Inc. v. Mike Torres, et al., NAF Claim No. 145209.
Finally, the Panel views the Respondent’s failure
to respond after proper notice of these proceedings as further evidence that
he has no rights or interest in the domain names in dispute. See Pavillion
Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency, Ltd.
and Glenn Greenhouse, WIPO Case No. D2000-1221.
6.C Domain Name Registered and Used in Bad Faith
The Panel finds that it can be inferred that Respondent had actual knowledge or constructive knowledge of Complainant’s marks and domain name web-site when Respondent registered the domain names in dispute and that such actual knowledge is evidence of bad faith by Respondent.
The mere act of typo-squatting or registering a domain
name that is a common misspelling of a mark in which another party has rights,
alone has been recognized as evidence of bad faith registration and use. See
National Association of Professional Baseball Leagues v. Zuccarini, WIPO
Case No. D2002-1011.
The Panel finds that in the facts of this case, Respondent’s
behavior in receiving commissions pursuant to Complainant’s affiliate
program is evidence of bad faith registration and use. See The Sports Authority
Michigan, Inc. v. Domhold, a/k/a D’VaulL., NAF Claim No. 135011.
For all of the foregoing reasons, in accordance with
Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders
that the domain names <bitasndpieces.com> and <bitsnadpieces.com>
be transferred to the Complainant.
John E. Kidd
Dated: October 7, 2005