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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Boots Company, PLC v. The programmer adviser
Case No. D2009-1383
1. The Parties
Complainant is The Boots Company, PLC, a United Kingdom corporation, of Nottingham, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Rouse Legal, United Kingdom.
Respondent is the programmer adviser of Surat Thani, Thailand.
2. The Domain Name and Registrar
The disputed domain name <bootshealthclub.com> (the "Domain Name") is registered with Go Canada Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2009. On October 19, 2009, the Center transmitted by email to Go Canada Domains, Inc. a request for registrar verification in connection with the Domain Name. On October 19, 2009, Go Canada Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the registrant and the registrar were not correctly listed in the Complaint, Complainant filed an amendment to the Complaint on October 23, 2009. 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" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. Respondent did not submit any formal response. Accordingly, the Center notified the Respondent`s default on November 16, 2009. On this same date, November 16, 2009, Respondent sent to the Center an email from the same email address to which the notification of default had been sent by the Center stating "PLEASE ADVISE US WHAT WE SHOULD RESPOND?" On the following day, November 17, 2009 the Center responded with copies to Complainant stating that a copy of this email of November 16, 2009 from Respondent would be included in the file.
The Center appointed James H. Grossman as the sole panelist in this matter on November 24, 2009. 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
Complainant is a member of the Boots group of companies which operates a leading pharmacy and healthcare chain in the UK trading under the name "Boots" with outlets throughout the UK. The group`s origins go back to 1849 when the Boots business was established by John Boot. In 2006 Complainant`s parent company merged with Alliance UniChem PLC creating a European-wide pharmacy-led health and beauty group. The retail side of the business employs over 60,000 people and operates approximately 2,550 health and beauty stores in the UK. Complainant`s parent company`s turnover in 2006 was in excess of GBP 5 billion.
Complainant is the owner of trademarks for BOOTS and BOOTS HEALTHCLUB in many parts of the world including Europe, Asia and Australia in relation to, inter alia, cosmetics, cleaning products, pharmaceutical products, beauty and healthcare services, spectacles, lenses and optician services. In particular Complainant has registered the trademark BOOTS HEALTHCLUB with the distinctive BOOTS logo on December 22, 2006 (published on January 19, 2007) in the UK in a variety of classes such as pharmaceutical preparations, medical services, and beauty care.
As part of its healthcare services, Complainant offers a service called BOOTS HEALTHCLUB which is a membership club open to all UK residents over 65. This offering as well as the Boots Advantage Card (loyalty card) is heavily advertised.
There were 96 Boots branded stores in Thailand as of 2006 and Complainant`s principle website is available internationally, including in Thailand. Additionally, Complainant has obtained registered trademark rights in the BOOTS mark in Thailand.
Respondent registered the Domain Name on May 23, 2009. On September 4, 2009, having discovered that Respondent was using the Domain Name, Complainant wrote to Respondent with a copy by email demanding, inter alia, a transfer of the Domain Name to Complainant.
5. Parties` Contentions
Complainant explains that the Domain Name was available for registration by Respondent as a result of the fact that its agent, Kraya Limited, a digital design agency hired to manage the Domain Name, and in whose name the Domain Name evidently was previously registered, allowed the registration to lapse and therefore the Domain Name passed into the open market where it was registered by Respondent. Thereafter, according to Complainant, some of its customers wrote to complain of various issues including that the corresponding website was being used as a "phishing" website to solicit personal information from customers and also that the banner adverts contained links for male escort services. As of October 2, 2009, the Domain Name displayed links to a variety of sites having no connection whatsoever with Complainant or the Boots group of companies. The links include one designed to make available remedies for preventing illegal drugs being detected pursuant to a drug test.
Complainant contends the use of the Domain Name is confusingly similar to its trademark in that it is conceptually identical to the trademark for BOOTS HEALTHCLUB as well as the distinctive BOOTS trademark, and therefore a visitor to the Domain Name will expect the website and the goods and services offered thereat to be provided by or connected with Complainant when this is not the case. Complainant argues that Respondent has no rights or legitimate interests in respect to the Domain Name in that Complainant has not authorized this use and that Respondent has no relationship of any kind with Complainant and its well recognized name.
Finally, Complainant sites a myriad of examples of why this use by Respondent constitutes bad faith including the fact that Respondent`s intentional and deliberate misdirection of Internet users was done knowingly in that these Internet users would assume they were at a Domain Name where they could find information on Boots` reputation and not, for example, on how to avoid drug testing.
Respondent did not reply to Complainant`s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i). the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Domain Name consists of both of Complainant`s trademarks: the distinctive BOOTS and BOOTS HEALTHCLUB trademarks are both included in their entirety and both of these marks were obtained well in advance of the date of Respondent`s registration of the Domain Name. The domain suffix ".com" has been held by prior panels to be irrelevant in this consideration of similarity. Accordingly, since the Domain Name entirely incorporates Complainant`s trademarks, Complainant has satisfied the threshold requirement of having trademark rights.
The Panel is convinced that the likelihood of confusion as to the source or sponsorship of the Domain Name is sufficient to satisfy the first criterion. The fact that some of the Boots` customers have so advised Boots is only further evidence of the actuality of such confusion. Therefore, the Panel finds that the Domain Name is identical or confusingly similar to trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent, according to Complainant, has not been authorized to use the Domain Name containing the BOOTS trademarks nor is there any relationship whatsoever between the parties. The website has a potpourri of offerings, none of which has any relationship to the businesses of Complainant. Rather, Respondent has simply tried through "phishing" and other links to dubious businesses to reach Internet users by taking advantage of the long term good will efforts earned over many decades by Complainant`s successful business.
Perhaps the most compelling of Complainant`s arguments is that Respondent really has no reason to use Complainant`s trademarks except to misdirect Internet users looking for Complainant`s business. Whether the use by Respondent is intended to generate revenues from third party sites to which the Internet user is directed or to obtain important personal information from Internet users believing they are dealing with Complainant, it is clear to this Panel that Respondent has no rights or legitimate interest in the use of the Domain Name.
The Panel accepts that Complainant has made a prima facie case that Respondent lacks right or legitimate interests. Accordingly, the burden is transferred to Respondent to demonstrate that it has any such rights or legitimate interests in the Domain Name. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that 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 circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) 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, providing that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract for commercial gain, Internet users to respondent`s website or other online location, by creating a likelihood of confusion with complainant`s mark as to the source, sponsorship, affiliation or endorsement of respondent`s website or location of a product or service on respondent`s website or location.
The Panel is of the view that Respondent by using the Domain Name has not only intentionally attempted but also obviously been able to attract for commercial gain, Internet users by creating actual confusion with Complainant`s mark as to the source, sponsorship, affiliation or endorsement of Respondent`s website. Respondent has no reason to use the Domain Name other than to cause this confusion and to pull in those who are seeking Complainant`s services or products. As Complainant argues, the combination of the names contained in the Domain Name has no meaning other than to direct someone to Complainant`s product and services. Complainant points out that there is precedent that the use of a mark to seek commercial gain by redirecting consumers to third party websites constitutes bad faith. Deutsche Telekom AG v. Gary Seto,
WIPO Case No. D2006-0690 and Volvo Trademark Holding AB v. Unasi, Inc.
WIPO Case No. D2005-0556. This Panel also agrees with the well-considered opinion by the Panel in Autosales Incorporated v. Don Terrill,
WIPO Case No. D2001-1341, to the effect that while a misdirected Internet user may become aware that this is obviously not a site related to Complainant, the initial confusion violates Complainant`s rights in its trademarks.
Also, with regard to the "phishing" operation at the website active of the Domain Name, there is once again precedent that such an activity is an indication of bad faith. Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,
WIPO Case No. D2006-0614. Page 4 of that decision forcefully states that "phishing" is found to be:
"a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv). "Phishing" is a form of Internet fraud that aims to steal valuable informationвЂ¦.A fake website is created that is similar to that of a legitimate organizationвЂ¦.and this information is used for identity theft and other nefarious activities".
There are two additional items the Panel has had to consider:
1) the fact that Complainant for whatever reason had allowed its agent to register the same Domain Name previously and the agent simply allowed the registration to lapse. There is certainly some negligence here which must be allocated to Complainant in view of the failure of its own agent. However, notwithstanding this failure to re-register, the bad faith of Respondent in its use of the Domain Name to pass itself off as set forth above stands out clearly above any such unintentional failure by Complainant or its agent.
2) the fact that Respondent sent an email on November 16, 2009 implying it did not know to what it must respond is disregarded by the Panel. As pointed out by Complainant, copies of its demand of September 4, 2009 had been sent to the same email address from which Respondent sent its email of November 16, 2009 (also the same email address to which the Center sent a copy of the Complaint, etc).
Finally, this Panel believes this would likely have been an appropriate case for the proposed plan to expedite the handling of certain cases and wishes to encourage the Center to move ahead with its proposed plan to expedite the handling of appropriate UDRP cases.
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 <bootshealthclub.com> be transferred to Complainant.
James H. Grossman
Dated: December 4, 2009