WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Baudville, Inc. v. Henry Chan

Case No. D2004-0059

 

1. The Parties

The Complainant is Baudeville, Inc., Michigan, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, United States of America.

The Respondent is Henry Chan, Nassau Bahamas.

 

2. The Domain Name and Registrar

The disputed domain name <baudeville.com> is registered with iHoldings.com, d.b.a. DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 2003, 2004 (electronic version), and on January 27, 2004, (hardcopy). On January 23, 2004, the Center transmitted by email to iHoldings.com, d.b.a. DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 26, 2004, iHoldings.com, d.b.a. DotRegistrar.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. Having 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), on January 29, 2004, the Center formally notified the Respondent of the Complaint, and thus the proceedings commenced on that date. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 18, 2004. On February 23, 2004, The Center notified the Parties of Respondentís default to file a Response.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on February 27, 2004. 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 the owner of the following trademark registrations:

Service/Trademark

Registration No.

Registration Date

BAUDVILLE

1,569,299

December 5, 1989

BAUDVILLE

1,971,086

April 30, 1996

BAUDVILLE (AND DESIGN)

1,945,755

January 2, 1996

BAUDVILLE

2,251,279

June 8, 1999

BAUDVILLEíS ID MAKER

2,353,435

May 30, 2000

The disputed domain name <baudeville.com> was registered on November 18, 2002.

 

5. Partiesí Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant asserted the following:

1. The trademark BAUDVILLE has been used since October 28, 1983, in connection with, inter alia, with, among other things, catalog services in the field of awards, stationary, envelopes, badges, lapels, seals and ribbons, and since November 1, 1984, in connection with mail order catalog services featuring border paper for awards and certificates, award plaques, award boards for mounting awards, picture frames, including frames for awards, decorative folders for use in presenting awards, seals, including metallic seals and ribbons for use in decorating awards.

2. The contested domain name <baudeville.com> is confusingly similar to the trademark BAUDVILLE, because Respondent has merely added an "e" to the end of "baud," which does not produce any phonetic difference or difference in meaning, and has added the gTLD ".com" to the said mark.

A.2. Respondentís lack of rights or legitimate interests in respect of the domain name

Complainant asserted the following:

1. Respondent has not used the disputed domain name <baudeville.com> or a name corresponding to the said disputed domain name in connection with a bona fide offering of goods or services.

2. Respondent has not been commonly known by the name BAUDEVILLE or the domain name <baudeville.com>.

3. Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain, and Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís website, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website of products and services available through Respondentís website.

A.3 Bad faith registration and use

Complainant submitted the following arguments:

1. Respondentís website provides direct links to websites having services for selling lapel pins, custom pins, awards, trophies, plaques, medals, certificate and other items.

2. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís website and the other websites linked thereto, by creating a likelihood of confusion with Complainantís registered trademarks as to the source, sponsorship, affiliation and endorsement of 1) Respondentís website and the locations linked thereto, 2) the service provided on Respondentís website, 3) the services provided on the websites linked to Respondentís website and 4) the products sold by the websites linked to Respondentís website.

B. Respondent

Respondent did not file a Response.

 

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that each of the following three elements are at present:

"(i) the domain name in question 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 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

Complainant has proved to have rights to the trademark "BAUDVILLE."

This Panel finds that the disputed domain name <baudeville.com> is confusingly similar to Complainantís trademark "BAUDVILLE." To carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) ".com," because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000) (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, (June 13, 2000); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, (March 23, 2000)). Therefore, when comparing Complainantís trademark to the disputed domain name, it is clear that the only difference between the former and the latter is the addition of a letter "e" in the contested domain name.

The addition of such a letter is not sufficient to differentiate Respondentís domain name from Complainantís trademark. The domain name <baudeville.com> is phonetically and graphically confusingly similar to the mark "BAUDVILLE."

Therefore, Complainant has met the first requirement of the Policy.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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." (Policy, Paragraph 4(c)).

Complainant has argued that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís website, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website of products and services available through Respondentís website. Complainant has submitted evidence of a website in which top appears the following advertisement:

"Baudeville.com

Your source for the most popular Baudeville info!"

Complainant points out that Respondentís site provides direct links to websites having services for selling lapel pins, custom pins, awards, trophies, plaques, medals, certificates and other items identical or similar to the goods sold under the trademark "BAUDVILLE."

Even if Respondent appears not to be selling these articles directly, he is certainly directing Internet users to websites of sellers of goods that compete with the products sold by Complainant, under the "BAUDVILLE" trademark. This use of the disputed domain name cannot be legitimate. See The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 (February 27, 2002), in that the disputed domain names "resolved to a website at the address <MEGAGO.COM>. The site is an online directory and contains a copyright notice (Ď© 2002 MegaGo.comí) at the foot of the page. While the names are, therefore, being used by the Respondents, the purpose appears to be to direct unwitting users mistyping or misspelling the address for the Nasdaq site to the ĎMegaGo.comí site, for commercial gain."

This case is similar to Nasdaq Stock Market v. NSDAQ (see supra), in that the disputed domain name seems to resolve to a directory. Said directory comprises links that direct users to sites of possible competitors of Complainant. No rights or legitimate interests derive from this type of use of anotherís trademark.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

Complainant has argued that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his website. Respondentís domain name resolves to a Directory which in turn lists the names and URLs of potential competitors of Complainant. Respondent has not contested this allegation.

Internet users looking for Complainant are likely to be confused and mislead by Respondentís domain name <baudeville.com>, when searching the Internet for stationary catalogs and similar products or services offered by Complainant under the mark "BAUDVILLE." See Nasdaq Stock Market v. NSDAQ supra (citing in turn Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., (WIPO Case No. D2000-0587), Edmunds.com, Inc v WWWEDMUNDS.com and DMUNDS.com (WIPO Case No, D2001-0937) and Pig Improvement Company, Inc. v. Platinum Net, Inc., (WIPO Case No. D2000-1594).

Even if Respondent has not attempted to attract Internet users to his site for direct commercial gain, there is reason to believe that Respondent has attracted said users to his site in an attempt to attract indirect commercial gain from the "selling" of spaces in his Directory. Respondent could have also done this as a means for persuading Complainant to acquire the disputed domain name from Respondent, in excess of your documented out-of-pocket costs directly related to the domain name (see Paragraph 4 (b)(1) of the Policy). The Panel finds no other plausible reason for Respondent to obtain a domain name that is confusingly similar to Complainantís mark "BAUDVILLE," and then put together a Directory of providers of goods and services that directly compete with Complainant, i.e., that offer virtually the same products or services offered by Complainant under the mark "BAUDVILLE," in order to have the said domain name resolve to the mentioned site. In the view or the Panel, this is no coincidence.

Complainant has thus established that the disputed domain name <baudeville.com> has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.

 

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 <baudeville.com> be transferred to Complainant.

 


 

Kiyoshi I. Tsuru
Sole Panelist

Dated: April 5, 2004