WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boujis Limited v. Domains By Proxy, LLC / Dior Lania

Case No. D2018-2843

1. The Parties

The Complainant is Boujis Limited of London, United Kingdom, represented by HGF Limited, United Kingdom.

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Dior Lania of Manila, Philippines.

2. The Domain Name and Registrar

The disputed domain name <boujis.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint/amended Complaint on December 14, 2018.

The Center verified that the Complaint together with the amendment to the Complaint/amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2019.

The Center appointed William R. Towns as the sole panelist in this matter on January 28, 2019. 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 Complainant is the owner of the Boujis, a popular nightclub in London frequented by celebrities, including English royalty such as Princes William and Harry. The nightclub was temporarily closed in 2016, but the Complainant represents that the club will reopen.

The Complainant is the owner of a number of trademark registrations for BOUJIS, including the following:

European Union Registration No. 005897616, applied for May 11, 2007, and registered August 8, 2008

International Registration No. 962558, applied for and registered April 4, 2008

United States Registration No. 79053214, applied for April 4, 2008, and registered October, 6, 2009

China Registration No. 6145002, applied for July 3, 2007, and registered May 28, 2010

Bahrain Registration No. 77045 applied for and registered July 2, 2009

The Respondent registered the disputed domain name <boujis.com> on November 22, 2018. The <boujis.com> domain name previously had been registered for use by the Complainant with the Complainant’s official webpage. However, the Complainant’s domain name lapsed on October 11, 2018, and the Respondent registered the disputed domain name several days following the expiration of the grace period for the Complainant to renew the registration.

The Respondent has used the disputed domain name with a website, in the format of a blogsite, that adopts the look and feel of Complainant’s official website, featuring the Complainant’s mark, distinctive logo, and background color scheme, and displaying images of the Complainant’s Boujis nightclub. Further, the Respondent has inserted in the text of the website “text-link adds” that click through to commercial gambling websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <boujis.com> is identical to the Complainant’s BOUJIS mark, in which the Complainant asserts trademark rights arising from registration and use.

The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name, stating that the Respondent has no intellectual property rights in the BOUJIS name and brand, does not operate any nightclub under the BOUJIS name, and has not been commonly known by the disputed domain name. According to the Complainant, the Respondent is using the Complainant’s mark, logo and official images of the Complainant’s nightclub in an attempt to pass himself off as the Complainant, and further placing on the website “text-link adds” to other commercial websites, including gambling websites, to generate click-through revenue. In view of the foregoing, the Complainant contends that the Respondent is neither making a legitimate use of the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate non-commercial of other fair use of the disputed domain name.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the disputed domain name is identical to the Complainant’s BOUJIS mark, and explains that the disputed domain name, which had been registered for the benefit of the Complainant and used with the Complainant’s website, was inadvertently allowed to lapse. According to the Complainant, the Respondent then registered the disputed domain name within two days of the expiration of the Registrar’s grace period. The Complainant maintains that the Respondent is using the disputed domain name with a website that prominently displays the BOUJIS mark and logo, as well as other signage, literature, photographs, text, and graphics connected with the Complainant’s nightclub business and used on the Complainant’s official website.

The Complainant contends that the Respondent is benefiting financially from his impersonation of the Complainant’s website, has no legitimate interest in the disputed domain name, and in the circumstances at hand could not conceivably be using the disputed domain name in good faith. The Complainant submits that the Respondent opportunistically registered the disputed domain name seeking to exploit and profit from the Complainant’s BOUJIS mark, and to disrupt the Complainant’s business by preventing the Complainant from using a domain name used by the Complainant on a daily basis and by the Complainant’s customers, suppliers and associates.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the 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.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <boujis.com> is identical to the Complainant’s BOUJIS mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s BOUJIS mark is clearly recognizable in the disputed domain name.² Top Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.³ In this instance the disputed domain name is identical to the Complainant’s mark when disregarding the gTLD “.com”. See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant’s DE BEERS mark).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s BOUJIS mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and is using the disputed domain name with a blogsite that appropriates the look and feel of Complainant’s official website, features the Complainant’s mark, distinctive logo, and color scheme, and displays multiple images of the Complainant’s Boujis nightclub. The Respondent has inserted in the text of the webpages “text-link adds” to commercial gambling websites, in all likelihood generating click-through revenues for the Respondent.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

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

(ii) the respondent has been commonly known by the domain name, even if he 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 submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is evident from the record that the Respondent was aware of the Complainant and the Complainant’s BOUJIS mark when registering the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights, though generation of click-through revenues or with the intention of selling the disputed domain name to the Complainant. Internet users encountering the disputed domain name could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.

In light of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. 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 and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident from the attendant circumstances of this case that the Respondent was aware of the Complainant’s BOUJIS mark when registering the disputed domain name. The Panel concludes from such circumstances that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s BOUJIS mark, whether by generation of click-through revenues, or selling the disputed domain name to the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <boujis.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: February 11, 2019

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .

² See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

³ The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.