WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boullioun Aviation Services, Inc. v. Elizabeth Strauch
Case No. D2002-1051
1. The Parties
The Complainant is Boullioun Aviation Services, Inc., Bellevue, WA, United States of America, represented by Jessica Stone Levy of the law firm Preston Gates & Ellis, LLP, Seattle, Washington, United States of America.
The Respondent is Elizabeth Strauch, Elk Grove Village, Illinois United States of America. She is represented by Ari Goldberger of the ESQwire.com law firm, Cherry Hill, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <boullion.com> is registered with Register.com, New York.
3. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANNís Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").
The current dispute lies within the scope of the Policy, so that the Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar and the Respondent clearly incorporate the Policy, so that Respondent was notified of the existence of the Policyís provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondentís domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4(a). In order to successfully make its case, the Complainant must prove each of these three elements.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2002. On November 15, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 15, 2002, Register.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, billing, and technical contact. The initial Registrar verification indicated that Registrar had not yet received a copy of the Complaint, but soon thereafter it received a copy. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
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 November 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2002. The Response was filed with the Center on December 11, 2002.
The Center appointed Paul E. Mason as the sole panelist in this matter on December 30, 2002. 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 relevant uncontested facts are these:
- The Complainant registered its service mark BOUILLIOUN with the United States Patent & Trademark Office (USPTO) on April 28, 1992. This service mark covers the following services related to commercial aircraft leasing: "providing acquisition, trading, brokerage, financing and valuation services for the aviation industry."
See Complaint, pages 7-8.
- Complainant has not licensed or otherwise authorized Respondent to use the BOUILLIOUN service mark name.
- The domain name was registered by Respondent on February 18, 2000.
5. Partiesí Contentions
To support its contentions, Complainant alleges that (1) the domain name is confusingly similar to Complainantís service mark referred to in Section 4 of this decision; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the domain name is registered and is being used in bad faith.
Complainant makes the following arguments with respect to confusion:
1. The domain name <boullion.com> differs from the BOULLIOUN service mark by only one letter, which leads to web user confusion and misdirection to Respondentís website, which amounts to "typosquatting". See Complaint, paragraph 18.
Complainant makes the following arguments with respect to lack of rights of Respondent in the domain name:
1. Complainant has not authorized Respondent to register or use as a domain name the variation on the BOUILLIOUN service mark name. See Complaint, paragraph 24.
2. Respondent has not actively been using the domain name for a legitimate business purpose. Although Respondent appears to run a business called Impact Media Design which conducts website related hosting, design, billing etc., there has been no visible connection of this business to the domain name. See Complaint, paragraph 22.
3. Complainant has made a number of other arguments regarding Respondentís lack of rights or legitimate interests in the domain name; however, most of these are related more closely to the question of bad faith and will be addressed below.
Complainant makes the following arguments with respect to the bad faith registration and use of the domain name by Respondent (see Complaint, Part V-B, paragraphs19-21, 23, 25):
1. Because of the confusion in spelling between the domain name and Complainantís, Respondent has been receiving emails intended for Complainant for the last two and a half years, and has taken advantage of this fact to send unsolicited emails to Complainantsí employees asking for money.
2. Complainantís research at the time the Complaint was submitted revealed no active use of the domain name by Respondent in connection with a legitimate business. Passive holding of a domain name can be indicative of bad faith in conjunction with other relevant factors, according to the Telstra Corporation v. Nuclear Marshmallows (WIPO Case No. D2000-0003) decision.
3. Complainantís research at the time the Complaint was submitted showed that the website to which the domain name resolved contained on its home page a statement that the website was inactive or might be sold because of a conflict with a name similar to its own.
4. Respondent offered to sell the domain name to Complainant for a sum very much in excess of Respondentís own costs in acquiring the domain name. If Respondent did not obtain its desired price for the domain name, it also threatened to reveal to third parties confidential information of Complainant obtained via communications accidentally misdirected to Respondent. See Complaint, paragraph 26, 33.
5. Respondent knew at the time of registration of the domain name or very soon thereafter that there would be confusion with websites and names such as that of Complainant, so that maintaining this registration is evidence of bad faith registration of the domain name. See Complaint, paragraphs 27, 29.
Respondent replies to Complainantís contentions as follows:
With respect to the confusion element, Respondent argues:
1. Respondent chose the domain name <boullion.com> because she mistakenly thought it was the correct spelling for bullion, as in gold bullion, a name which she wanted to associate with financial success for customers of her business. At the time of registration, Respondent had no knowledge of Complainant and also had no knowledge of the correct spelling of the word "bullion". See Response, paragraph
I-1 and attached Declaration of Respondent, paragraph 4.
2. The domain name is not confusingly similar to Complainantís service mark because Complainant and Respondent are in different spheres of business activity, from a trademark law point of view. See Response, paragraph III-A
With respect to the issue of legitimate rights or interests in the domain name, Respondent argues:
1. It registered the domain name in connection with its Impact Media Designs business, in which Respondent invested a substantial sum of money. See Response, paragraph B.
2. The domain name at issue is really a slight variation on the generic word "bouillon" (soup stock), therefore deserves no legal protection at all, and registration of the domain name spelling variant constitutes good faith registration.
3. Complainantís offer to buy domain name for US $5,000. shows its recognition of Respondentís legitimate interest in the domain name. See Response, paragraph B, at page 6.
With respect to the issue of bad faith registration and use of the domain name, Respondent argues as follows (see Response, part C, page 8 and attached Declaration of Respondent):
1. Respondent did not use the domain name to interfere with Complainantís business.
2. Respondent has the right to respond to an inquiry by a party to sell the domain name.
3. Respondent simply wanted to recoup her $70,000. investment in her business by selling the domain name.
4. Respondent offered the domain name for sale to Complainant as a good faith gesture and alternative to its attempt to sell the same domain name to a major soup company.
5. Respondent only offered to sell the domain name for humanitarian purposes, to raise funds to help a sick relative.
6. Respondent has no inventory of other domain names to sell.
7. It was Complainant who insisted that Respondent communicate a selling price for the domain name.
8. Respondent never threatened to release any confidential information of Complainant, but rather merely suggested that if the domain name were sold to someone else, this third party might not be as generous as Respondent in forwarding such information to Complainant.
Finally, Respondent alleges that Complainant has engaged in reverse domain name hijacking by submitting a complaint without merit, just because their negotiations for sale of the domain name broke down.
6. Discussion and Findings
A. Identical or Confusingly Similar
First, this Panel wishes to observe from its visits to the websites of both parties on December 31, 2002, that each have websites with their own spelling.
There are a myriad of UDRP cases dealing with typosquatting, i.e. using a slight variation of a name to create similarity and confusion. See Cimcities, LLC v. John Zuccharini D/B/A Cupcake Patrol, WIPO Case No. D2001-0491 and cases cited therein.
Furthermore, it is difficult to believe that Respondent really had gold bullion in mind when registering the allegedly misspelled domain name. Respondent claims to run a computer-based website design business, yet apparently did not run a PC spell-check on the intended domain name. This is all the more incredulous today, almost three years after Respondent registered the domain name,
Respondent argues that there can be no similarity or confusion because the parties engage in different spheres of commercial activity. However, this is a classic trademark law argument which is really not applicable under the UDRP. In the Internet world of similar domain names resolving to different websites, spheres of activity do not matter, just confusion and misdirection to Respondentís website for its own commercial gain.
The Panel also questions why Respondent did not engage in a trademark search before registering this particular domain name.
Therefore, the Panel concludes that the domain name is confusingly similar to Complainantís previously registered mark.
B. Rights or Legitimate Interests
Here, the key question is whether Respondent was using the domain name and website to which it resolves in active connection with its website design business or not. This also goes to the question of good or bad faith.
Respondent has not denied Complainantís claim that the domain name and website design business have heretofore been unrelated. Instead, Respondent appears to have activated a website home page for this business linked to the domain name, but only after the Complaint was submitted. This is the conclusion drawn by the Panel upon visiting "www.boullion.com" on December 31, 2002, and comparing it to Complainantís Annex E showing Respondentís home page on October 29, 2002, shortly before the Complaint was filed. The October 29 home page contained a statement that the website was inactive and might be sold off, and contained no reference to Respondentís website design business.
Respondentís "generic" argument (Complainant cannot register a variant of the generic word for soup stock) is a basis for denying trademark registration, which the USPTO did not do. This argument is also somewhat inconsistent with the claim that Respondent itself was merely registering a variant of the word for gold bullion.
Respondent also argues that Complainantís offer to buy the domain name somehow implies a recognition of Respondentís rights in the name. However, no corroborating evidence is provided to prove any explicit recognition of Respondentís rights. Furthermore, this Panel has held in previous cases, and also finds here that it is generally not appropriate to use communications of the parties in settlement negotiations as evidence in a proceeding to determine rights in a domain name. To do otherwise would undermine efforts by the parties in a negotiation to settle their matter amicably.
Therefore, the Panel concludes that Respondent does not have a legitimate right or interest in the domain name.
C. Registered and Used in Bad Faith
It is difficult to know exactly what was in the mind of Respondent at the moment she registered the domain name, in terms of good or bad faith. However, the fact remains that soon thereafter, she began receiving emails intended for Complainant and did not make any effort to consider changing the domain name. Instead, she chose to attempt to profit from the confusion and sent financial solicitations via email to Complainantís employees. Knowing of the misspelling of the word for gold bullion (her alleged motive for registering the domain name), she continued with the domain name containing the incorrect spelling.
Two other very relevant facts are determinative of this case:
1) There is no disclaimer whatsoever by Respondent on its website to the effect that it is not affiliated with Complainant, which implies an intention to profit from web traffic confusion with Complainant.
2) The extraordinarily high asking price for the domain name, between U.S. $500,000 - $ 1.37 million, obviously in excess of Respondentís costs in registering the name, or even of Respondentís claim to try and recoup its $ 70,000. business investment.
CONCLUSION - Respondent did not change the domain name when she soon became aware of its similarity w Complainantís mark. Instead, she saw the tactical potential to try and take advantage of the situation.
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 <boullion.com> be transferred to the Complainant.
Paul E. Mason
Date: January 3, 2003