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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Boyd Flotation Inc. v. Hostmaster, Hostmaster

Case No. D2008-1013

 

1. The Parties

The Complainant is Boyd Flotation Inc., Maryland Heights, Missouri, United States of America, represented by Fredrikson & Byron of United States of America.

The Respondent is Hostmaster, Hostmaster, Berlin, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <boydflotation.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008.

On July 4, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 7, 2008, the Registrar transmitted by email to the Center its verification response giving the details of the registrant and of the Billing and Technical contact.

On July 15, 2008, the Complainant was notified that the Complaint was administratively deficient, that is, the Complaint has not been signed by the Complainant or its authorized representative as required by Rules, Paragraph 3(b)(xiv). In response to the notification the Complainant filed an amendment to the Complaint on July 17, 2008.

The Center verified that the Complaint together with the amendment to 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 July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Respondent was informed that if his Response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any Response within the prescribed time. Accordingly, the Center notified the Respondent’s default on August 12, 2008.

The Center appointed Vinod K. Agarwal, Advocate and former Law Secretary to the Government of India as the sole panelist in this matter on August 21, 2008. 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

From the Complaint and the various annexures to it, the Panel has found the following facts:

Complainant’s activities

The Complainant is the manufacturer of specialty sleep products. The Complainant’s premium products include air beds, fluid suspension soft side mattresses, adjustable beds, and “engineered latex” foam products. The Complainant is also registered owner of many other trademarks using the mark BOYD, such as, BOYD ILLUSTRA, BOYD ADJUSTA FLEX, BOYD NATURAL FLEX, BOYD NIGHT AIR, etc. Most of these trademarks are registered in the United States of America. The Complainant has been using the mark BOYD FLOTATION for the last more than 20 years. The mark BOYD has been in use for about 9 years in respect of mattresses and other similar products.

Respondent’s Identity and Activities

The Respondent did not file a Response. Hence, the Respondent’s activities are not known.

 

5. Parties Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.

In relation to element (i), the Complainant contends that it is the owner of the registered trademark BOYD FLOTATION. The said trademark is registered in the United States of America. Further that, the Complainant owned the registration of the disputed domain name up to March 30, 2008 when it was inadvertently not renewed. The Respondent registered the disputed domain name on or about April 2, 2008. The Complainant also owns a registration for <boydspecialtysleep.com>. The BOYD and FLOTATION are registered marks of the Complainant. The disputed domain name contains the words “boyd” and “flotation”, thus, the disputed domain name is confusingly similar to the marks of the Complainant.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <boydflotation.com> as the Respondent is known as “Hostmaster, Hostmaster.” The Respondent has not made any application in any jurisdiction for the registration of the mark “boyd” or”flotation”. Further that the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of earning the profit by selling the domain name and misleading the customers of the Complainant.

Regarding the element at (iii), the Complainant contends that the Respondent is not making a legitimate non-commercial or fair use of the domain name. The main object of registering the domain name <boydflotation.com> by the Respondent is to earn profit by selling it and to mislead the general public and the customers of the Complainant and to tarnish the trademark of the Complainant. Further that, the landing page of the website associated with this domain name provides sponsored links tied to the domain name which presumably offer Respondent a “pay per click” source of revenue. Thus, the Respondent’s use of domain name is anything but a bona fide offering of goods or services.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall 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”.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name 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 interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <boydflotation.com>. The Complainant is the registered owner of the trademark BOYDFLOTATION in the United States of America and some other countries. The said trademark BOYD FLOTATION has been used in the domain name of the Respondent. The Respondent has copied the entire trademark of the Complainant in the disputed domain name and has only added a generic top level domain “.com”. This addition has no significance. The domain name <boydflotation.com> indicates a relationship between the Complainant’s trademark and the domain name in question.

The Complainant has relied on the decision in the case of Lo Monaco Hogar, S. L. v. MailPlanet.com, WIPO Case No. D2005-0896 and Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053. In these cases it has been held that a registrant may not avoid confusion by appropriating another’s entire mark in a domain name and adding a generic top level domain, such as, “.com”, which is without legal significance in determining the issue of similarity.

There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. Addition of “.com” does not change the mark. The Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not filed any Response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name, i.e., the Complainant has made out a prima facie case to that effect which the Respondent has not rebutted. See also Pavilion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.

BOYD FLOTATION is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating said trademark and that nobody would use the word “boyd flotation” unless seeking to create an impression of an association with the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, 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 location or of a product or service on its website or location.

The contention of the Complainant is that the present case is covered by the first circumstance. The disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration. The Complainant has furnished evidence of the fact that the Respondent has offered the domain name in question <boydflotation.com> for sale to the Complainant for US $ 2,500. Also the domain name is used by the Registrant for offering the goods that are identical to those sold by the Complainant. In the case of General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377, the Administrative Panel has held that the “typosquatting” constitutes bad faith registration and use.

This and other information submitted by the Complainant leads to the finding that the said domain name was registered and is being used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.

 

7. Decision

In light of the foregoing findings, namely, that the domain name is confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <boydflotation.com> be transferred to the Complainant.

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V. K. Agarwal
Sole Panelist

Dated: September 4, 2008