The Complainant is Boardroom Inc, Stamford, Connecticut, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Titan Net, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <bottomlinepersonal.org> is registered with
Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2006 by e-mail and on April 19, 2006 in hard copy. On April 19, 2006, the Center transmitted by email to Intercosmos Media Group Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 19, 2006, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. 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 April 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2006.
The Center appointed Manoel J. Pereira dos Santos
as the sole panelist in this matter on May 24, 2006. 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 marks upon which the Complaint is based are BOTTOM LINE PERSONAL and BOTTOM LINE (the BOTTOM LINE Family of Marks). According to documentary evidence and contentions submitted by Complainant, Complainant is the owner of the following U.S. trademark and service mark registrations:
According to documentary evidence and contentions submitted by Complainant, Complainant is a well known publisher and distributor of several periodicals, including among others “Bottom Line Personal”, “Bottom Line Retirement”, “Bottom Line Business”, “Bottom Line Health”, and other well known news, business periodicals and books, and has used its BOTTOM LINE and BOTTOM LINE PERSONAL names, trademarks and service marks for and in connection with its products and service since 1980.
Respondent commenced use of the term “Bottom Line Personal” as of January 21, 2006, when the disputed domain name was registered with Intercosmos Media Group Inc. d/b/a directNIC.com. The “www.bottomlinepersonal.org” website contains links which specifically reference Complainant’s products, and also offers “sponsored links” to other websites.
According to documentary evidence and contentions
submitted by Complainant, Complainant sent a cease and desist letter to the
Respondent on February 7, 2006, demanding that Respondent cease all use of the
BOTTOM LINE marks and requesting that Respondent transfer the disputed domain
name to Complainant. Respondent never replied.
5. Parties’ Contentions
A. Complainant
Complainant contends that Respondent’s domain name is identical to and incorporates in its entirety the BOTTOM LINE Family of Marks, and therefore is confusingly similar to the trademarks and service marks owned by Complainant. Complainant argues, relying on previous WIPO UDRP decisions, that the addition of the suffix “.org” does not bear upon the consideration of similarity.
Complainant further contends that Respondent has no right or legitimate interests with respect to the domain name because (i) Respondent has not made any bona fide offering of goods and services, (ii) Respondent has no agreements, legal or otherwise, with Complainant authorizing it to use either of the BOTTOM LINE or BOTTOM LINE PERSONAL names and marks, (iii) Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of any of the terms of the BOTTOM LINE Family of Marks, and (iv) Respondent owns no trademark registrations for any mark comprised, in whole or in part, of any of the terms of the BOTTOM LINE Family of Marks, nor has it applied for any such trademark registrations.
Finally, Complainant contends that Respondent has acted in bad faith because (i) Respondent registered the disputed domain name with the sole purpose of attracting, for commercial gain, Internet users to its website as a result of the creation of a likelihood of confusion with Complainant’s trademarks through the use of a domain name identical to a mark in which Complainant has rights, (ii) Respondent registered the disputed domain name with full knowledge of the BOTTOM LINE Family of Marks, and (d) Respondent and its affiliated entities (Spiral Matrix and Kentech, Inc) have engaged in a pattern of registering domain names incorporating the marks of third parties and offering them for sale.
In accordance with paragraph 4(b)(i) of the Policy, Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of the complainant and that a complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances
for the failure of the Respondent to submit a Response. As a result, the Panel
infers that the Respondent does not deny the facts asserted and contentions
made by Complainant from these facts. Reuters Limited v. Global Net 2000,
Inc., WIPO Case No. D2000-0441. LCIA
(London Court of International Arbitration) v. Wellsbuck Corporation, WIPO
Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac. WIPO
Case No. D2003-0994. Therefore, asserted facts that are not implausible
will be taken as true and the Respondent will be subject to the inferences that
flow naturally from the information provided by the Complainant. Reuters
Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441. RX America, LLC v. Matthew Smith. WIPO
Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
Complainant’s contention that the domain name <bottomlinepersonal.org> is identical and confusingly similar to Complainant’s BOTTOM LINE PERSONAL and BOTTOM LINE marks is warranted.
The BOTTOM LINE PERSONAL and BOTTOM LINE marks in which Complainant has rights have acquired distinctiveness and secondary meaning as a result of Complainant’s extensive use and promotion of the BOTTOM LINE Family of Marks since as early as 1980. The Panel accepts Complainant’s contention that same is the only entity with the legal right to use the BOTTOM LINE Family of Marks in connection with any product or service offering in light of Respondent’s failure to rebut such contention.
It is undisputed that the domain name <bottomlinepersonal.org> incorporates
such marks in their entirety. In addition, the suffix “.org” is
non-distinctive because it is required for the registration of the domain name.
RX America, LLC v. Mattew Smith, WIPO
Case No. D2005-0540. The addition of the “.org” portion of the
domain name does not affect a finding that the subject domain name is identical
to Complainant’s registered trademarks. This Panel concurs with previous
WIPO UDRP decisions holding that the “.com” and similar suffixes
are to be disregarded. Microsoft Corp. v. Whois Privacy Protection Service/Lee
Xongwey, WIPO Case No. D2005-0642;
Accor v. Howell Edwin, WIPO Case No.
D2005-0980; Deutsche Telekom AG v. Domainsforfile.com, WIPO
Case No. D2002-0164.
Therefore, the Panel finds that the domain name <bottomlinepersonal.org> is identical to Complainants’ BOTTOM LINE PERSONAL and BOTTOM LINE marks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, that Respondent has not made any bona fide offering of good or services, that Respondent only uses such domain name in a deliberate attempt to exploit users seeking Complainant’s <bottomlinepersonal.com> website and related products and services, and that any use by Respondent of the marks BOTTOM LINE PERSONAL and BOTTOM LINE in connection with the offering of goods and services constitutes infringement of Complainant’s valid trademark and services mark rights.
The consensus view in the WIPO URDP Panel decisions
has been that a complainant is required to make out an initial prima facie
case, the respondent then carrying the burden of demonstrating rights or legitimate
interests in the domain name. If the respondent fails to do so, a complainant
is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, para.
2.1).
The Panel accepts as reasonable Complainant’s contentions that Respondent has not been authorized to use the disputed domain name by Complainant, that Respondent has no other right or legitimate interest in the domain name, and that Complainant is the only entity with the legal right to use the BOTTOM LINE Family of Marks. By defaulting, Respondent failed to rebut such contentions and such facts as asserted by Complainant will be taken as true.
One critical issue here is whether use of a domain name to point to a website containing links which specifically reference Complainant’s products and also offering “sponsored links” to other non-competing websites constitutes a “bona fide offering of goods or services”.
The issue of whether Respondent is making a bona fide offering of goods
sufficient to establish legitimate interests in a disputed domain name has been
discussed in a number of WIPO UDRP cases. From a reading of these cases, this
Panel concludes that there are various overlapping and other factors that must
be considered in determining whether an offering of goods is bona fide
where no relationship exists between the trademark or service mark owner and
the owner of the disputed domain name. See Gerd Petrik v. Johnny Carpella,
WIPO Case No. D2004-1043; Pfizer Inc.
v. Websites, WIPO Case No. D2004-0730.
These factors, which are not necessarily exclusive, are:
(a) whether complainant has acquiesced in the use of its trademark, and whether it has tacitly acquiesced through the passage of time;
(b) whether the disputed domain name is the only name that respondent can use to describe its business;
(c) whether there is a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the registrant and the trademark owner;
(d) whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii).
The Panel notes that Complainant has not tacitly acquiesced in the use of its trademarks and services marks through the passage of time as Complainant promptly reacted to the registration of the disputed domain name and, as a result of Respondent’s failure to reply to Complainant’s cease and desist letter, instituted this administrative proceeding. Further, it is clear that the disputed domain name is not the only name that Respondent can use to describe its business given the fact that the “www.bottomlinepersonal.org” website merely offers “sponsored links” to other websites with no relationship with the products and services identified by Complainant’s valid trademarks and service marks.
Finally, an independent survey on the “www.bottomlinepersonal.org” website was conducted by the Panel by visiting that website on different dates (accesses on May 29, 2006 and June 6, 2006), and the Panel has noted that there is no prominent disclaimer permitting Internet users to know that there is no relationship between Respondent and Complainant. As a result, there is a likelihood of confusion with the Complainant’s marks as to the source, sponsorship or affiliation, or endorsement of Respondent’s website.
Finally, for an offering under Paragraph 4(a)(ii)
to be considered bona fide, domain name use must be in good faith under
Paragraph 4(a)(iii). See First American Funds, Inc. v. UltSearch, Inc,
WIPO Case No. D2000-1840. The Respondent
simply has no legitimate interest in using the marks BOTTOM LINE and BOTTOM
LINE PERSONAL as part of a domain name. Respondent is clearly intercepting Internet
users searching for Complainant’s well known products and services and
attempting to access Complainant’s “www.bottomlinepersonal.com”
website.
The Panel notes that the use of the disputed domain name may infringe on Complainant’s
legitimate rights, and a knowingly infringing use of a trademark is not a bona
fide offering of goods and services under the Policy. See Van Gogh Museum
Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian; WIPO
Case No. D2001-0879. Therefore, the Panel finds that the Respondent is not
using the disputed domain name in connection with a bona fide offering
of goods or services. The question of bad faith use will be further discussed
below where additional factors will be considered, but the foregoing finding
is sufficient to dispose of the matter at this point.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
This Panel has already found that Respondent registered the <bottomlinepersonal.org> domain name with the sole purpose of attracting, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s marks, in accordance with Paragraph 4(b)(iv) of the Policy.
There is a further element which is relevant in the resolution of this dispute.
Complainant contends that Respondent has evidenced a pattern of registering
domain names incorporating the marks of third parties. Complainant relies on
the decisions handed down in Société des Hôtels Meridien v. Spiral Matrix/Kentech
Inc., WIPO Case No. D2005-1196, and
Dr. Ing. h.c.f. Porsche AG v. Kentech Inc. a.k.a Helois, Inc a.k.a Orion
Web a.k.a. Titan Net a.k.a Panda ventures a.k.a Spiral Matrix and Domain Purchase,
NOLDC, Inc., WIPO Case No. D2005-0890.
The email address of Kentech Inc., one of the respondents in Société des
Hôtels Meridien v. Spiral Matrix/Kentech Inc., WIPO
Case No. D2005-1196, was […]@kenyatech.com, i.e., the same address
as given by Respondent to Intercosmos Media Group, Inc. d/b/a directNIC.com
in connection with the disputed domain name. In that case it was assumed that
Spiral Matrix is either identical with Kentech Inc. or is at least acting on
behalf of Kentech Inc. Therefore, it is reasonable to infer, for the purposes
of this proceeding, that, at the very least, Titan Net, Kentech Inc and Spiral
Matrix are closely related entities.
Dr. Ing. h.c.f. Porsche AG v. Kentech Inc. a.k.a Helois, Inc a.k.a Orion
Web a.k.a. Titan Net a.k.a Panda ventures a.k.a Spiral Matrix and Domain Purchase,
NOLDC, Inc., WIPO Case No. D2005-0890
is a case involving all three entities (including Respondent) among others.
The multitude of registrations evidenced a pattern of registering domain names
incorporating the marks of third parties and respondents were again ordered
to transfer the disputed domain names. Kentech was also a respondent in Bart
van den Bergh Merk-Echt BV v. Kentech Company Ltd, WIPO
Case No. D2005-0127, where the Panel found for plaintiff again.
In short, Respondent appears to be part of a group of entities consistently involved in a pattern of registering domain names incorporating third parties’ marks and this is a further conclusive indication that Respondent has registered and used the <bottomlinepersonal.org> in bad faith.
Complainant argues that Respondent was put on constructive notice of Complainant’s rights to the BOTTOM LINE Family of Marks prior to acquiring the domain name. The Panel is aware that WIPO UDRP panels are reluctant to introduce the concept of constructive notice into the UDRP, but there are different factors that lead to the conclusion that Respondent had actual knowledge of the Complainant’s marks. Respondent has a history of acquiring, registering and using domain names in bad faith and this circumstance is persuasive. Based on the record, the Panel infers that the Respondent knew at the time of the registration of the disputed domain name that the Complainant had established valid trademark and service mark rights in the BOTTOM LINE Family of Marks.
Accordingly, the Panel finds that the Respondent’s has registered and
used the disputed domain name in bad faith.
7. Decision
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 <bottomlinepersonal.org> be transferred to the Complainant.
