WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan
Case No. D2004-0174
1. The Parties
The Complainants are H.J.M. de Vries and Leidseplein Beheer B.V., both of Amsterdam, Netherlands; represented by L. Bakers of Amsterdam, Netherlands.
The Respondent is O.E.W. van der Zwan of Noordwijk, Netherlands, represented by Teurlings & Ellens Advocaten of Amsterdam, Netherlands.
2. The Domain Names and Registrars
The disputed domain names <buldog.com> and <bulldog.com> are registered with TLDs, Inc. dba SRSplus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2004. On March 10, 2004, the Center transmitted by email to TLDs, Inc. dba SRSplus a request for registrar verification in connection with the domain names at issue. On March 13, 2004, TLDs, Inc. dba SRSplus 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 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 March 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2004. An extension was requested by the Respondent until April 18, 2004, and granted by the Center. The Response was filed with the Center on April 18, 2004.
The Center appointed Hub J. Harmeling as the sole panelist in this matter on May 4, 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
There are two Complainants: H.J.M. de Vries and Leidseplein Beheer B.V. H.J.M. de Vries is the owner of several Benelux trademark registrations (word marks and devices) for THE BULLDOG for, amongst others, bar, restaurant and hotel services, bike rentals, merchandise and energy drinks. H.J.M. de Vries registered the first THE BULLDOG trademark in the Benelux on October 14, 1986. Leidseplein Beheer B.V. is a licensee/registered user of THE BULLDOG trademarks.
Under the THE BULLDOG trademarks, Complainants operate a THE BULLDOG hotel and several THE BULLDOG café facilities, all located in the center of Amsterdam. Complainants began operating the first THE BULLDOG café in the early 80’s. Complainants also use these trademarks to market THE BULLDOG merchandise.
The Respondent registered the domain name <bulldog.com> on November 12, 1997, and registered the domain name <buldog.com> on April 20, 2000. The domain name <bulldog.com> is re-routed to the same IP address as <buldog.com>. The website that Respondent exploits under these domain names is a so-called Thumbnail Gallery Post (“TPG”) page. It offers a selection of American adult-oriented websites.
5. Parties’ Contentions
The Complainants are of the opinion that this administrative proceeding should be decided in accordance with the provisions of the Benelux Trademark Act (“BTA”) as both parties are domiciled in the Netherlands and the trademarks involved are, amongst others, Benelux trademarks.
The Complainants request the Panel to issue a decision that the domain names <buldog.com> and <bulldog.com> be transferred to H.J.M. de Vries based on the following arguments:
Identical or confusingly similar
Complainants are of the opinion that the disputed domain names are identical or confusingly similar to Complainants THE BULLDOG word marks and devices containing the element BULLDOG (hereinafter to be referred to as “the Trademarks”).
Complainants argue that the gTLD-suffix “.com” should not be taken into account by the Panel when making the assessment whether there is a case of identicality or confusing similarity. Further, Complainants find that the mere omission of the word ‘the’ and/or the omission of one ‘l’, does not in any significant way distinguish the disputed domain names from the Trademarks.
Complainants find that this similarity causes confusion amongst customers visiting the disputed domain names expecting to see Complainants’ website and that Respondent thus takes unfair advantage and is damaging the reputation of Complainants’ trademarks. Reference is made to a specific provision in the BTA that provides for a protection for trademarks in similar cases.
Rights or legitimate interests
Complainants find that Respondent does not have any rights or legitimate interests in the disputed domain names.
Complainants note that the burden of proof on the issue of Respondent’s lack of legitimate interests in respect of the domain names should be light as it is difficult to prove a negative (i.e., that Respondent lacks any rights or legitimate interests). Therefore, it is sufficient that Complainants provide prima facie evidence in order to shift the burden of proof onto the Respondent.
Complainants argue that the Trademarks are well-known in and outside the Benelux and that this was already the case at the time of registration of the disputed domain names.
Further, Complainants argue that there is no particular connection between the word ‘bul(l)dog’ and Respondent’s goods and services, i.e., the offering, marketing and promoting of pornographic products. Also, they note that Respondent does not use ‘bul(l)dog’ as a trade name.
Complainants note that Respondent did not obtain Complainants’ consent nor was it licensed to use the Trademarks and that the Respondent is not affiliated or connected to the Complainants.
Registered and used in bad faith
Also, in this regard, Complainants point out that the Trademarks were already well-known in and outside the Benelux at the time of registration of the disputed domain names. They note that approximately 1,500,000 people per year visit the different THE BULLDOG cafés and that the THE BULLDOG hotel hosts about 30,000 to 40,000 people per year, while the THE BULLDOG merchandise turnover figures amount to approximately € 500,000 per year. Reference is made to their 2002 Annual Report.
Complainants refer to a specific provision in the BTA that provides for extra protection for well-known trademarks, without it being necessary to prove a likelihood of confusion.
Considering that Complainants’ trademarks were already well-known at the time of registration of the disputed domain names and that Respondent lives 30 km from Amsterdam, Complainants conclude that Respondent must have been aware of Complainants’ trademarks at the respective moments of registration. Hence, Complainants assert that Respondent is merely trying to take advantage of the reputation of their trademarks.
Complainants argue that the fact that Respondent refers to ‘the buldog’ on its website and also uses a device in the shape of the head of a bulldog, identical to the device for which Complainants hold exclusive trademark- and copyrights proves the bad faith of Respondent and illustrates that he wants visitors to believe that his website is used by or with the permission of Complainants.
Complainants note that by using the disputed domain names Respondent intentionally attempts to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on this website or location. In this regard, Complainants make it clear that Respondent’s website specifically refers to Complainants as endorsing Respondent’s website, such as “The buldog recommends these outstanding pay-sites…”. Complainants find that Respondent is thus taking unfair advantage of Complainants’ trademarks and causing damage thereto.
Contrary to what has been brought forward by Complainants, Respondent is of the opinion that the Panel should decide primarily on the basis of the provisions of the Policy. He notes that if Complainants had wanted the laws of the Netherlands to apply, such as the BTA, they should have started proceedings before a Benelux Court instead of choosing the option of a UDRP proceeding.
Furthermore, Respondent notes that there are significant differences between the assessment of a dispute under the UDRP Rules and the BTA, which require different considerations for a Panelist (or judge).
In addition, Respondent is of the opinion that the Panel should declare a non-suit with respect to Complainant, Leideplein Beheer B.V., as Respondent finds that this party has no interest in being joint-Complainant. Respondent notes that Leidseplein Beheer B.V. is not the owner of the Trademarks, and only – but not in all cases – licensee of Complainant, H.J.M. de Vries, whilst Leidseplein Beheer B.V. does not request the Panel to transfer the disputed domain names to its name.
Identical or confusingly similar
Respondent notes that a ‘standard’ (generic) word such as ‘bulldog’ (English) or ‘buldog’ (Dutch) is not to be monopolized by means of trademark- or other intellectual property rights.
Further, Respondent notes that Complainants do not avail of any trademark registrations for the term BULLDOG and always use this term in combination with THE. Respondent is of the opinion that the addition of the word THE in the Trademarks of Complainants distinguishes these Trademarks from the general word ‘bulldog’ to such an extent that the general informed public will be able to recognize the difference between a domain name consisting of the word ‘bu(l)ldog’ and a domain name, e.g., consisting of the words ‘thebulldog’ or ‘the-bulldog,’ especially taking into account the completely different ranges of services offered by the respective parties.
Accordingly, Respondent argues that the public – when confronted with the disputed domain names – will not consider this service to be of Complainants or to be linked to Complainants and, therefore, no confusion is to be expected between the trademarks and the disputed domain names. Moreover, Respondent notes that Complainants have not submitted any proof of any such confusion.
Further, Respondent disputes Complainants’ assertion that Respondent’s domain names would be causing actual damage to Complainants, or to its reputation or the distinctiveness of the Trademarks and note that Complainants did not submit any evidence to prove otherwise.
Rights or legitimate interests
Respondent disputes that Complainants would have a ‘light’ initial burden of proof regarding Respondent’s alleged lack of rights or legitimate interests in the disputed domain names. Respondent finds that Complainants did not submit any evidence nor did they bring forward any reasons why this burden should shift from Complainants to Respondent after they would have supplied prima facie evidence regarding Respondent’s lack of rights or legitimate interests. Respondent argues that in any case the mere conclusion of having a ‘well-known’ trademark would not be sufficient to constitute such ‘prima facie evidence.’
Respondent disputes that Complainants’ Trademarks would be ‘well-known’ in and outside the Benelux. Respondent notes that Complainants did not provide any evidence regarding the recognition of these Trademarks amongst the relevant public nor regarding the public’s association when confronted with the name ‘bulldog’ or ‘buldog.’ Respondent points out that Complainants’ THE BULLDOG hotel and cafés are all located – only – in the center of Amsterdam and hence not well-known in and outside the Benelux. To support his argument, Respondent notes that a Google search for the expression ‘bulldog’ gives 1,770,000 results for sites from all over the world with only a few references to Complainants.
Besides the issue whether Complainants’ trademarks are well-known at present, Respondent argues that the Trademarks were, in any case, not well-known at the time of registration of the disputed domain names (i.e., in 1997 and/or 2000). Respondent argues that the only factual material Complainants supplied to support that their Trademarks are – and were at the time of registration– well-known, are financial figures of 2002, which, in Respondent’s view, cannot be considered evidence thereof.
In addition, Respondent points out that ‘bul(l)dog’ is a generic term and the trademark owner ‘should have known that there is a risk of a less unique position and the possibility of third parties using that generic name.’ To illustrate this, Respondent provides various examples of other parties also using a name that includes or comprises the term ‘bulldog’ either as a trade name, domain name, or trademark, etc.
Respondent further argues that, as opposed to trying to take advantage from Complainants’ Trademarks, the primary reason for choosing to register the disputed domain names is that generic names such as ‘bulldog’ are easy to find and remember.
Another reason for choosing such a generic name for a TPG website is that a name such as the disputed domain names will not that easily lead to suspicion of employees visiting adult-rated websites by webmasters or controllers of internal Internet systems of companies, whereas names such as <pussy.org> and <teens.org> will.
In addition, Respondent notes that ‘bulldog’ is a name that is used in the porn industry as a description for vibrators (‘bulldog carded vibrator’) and also for a way of having sex. Accordingly, Respondent finds that the disputed domain names do refer to the type of services offered by Respondent.
Respondent argues that a last – practical – reason for registering the disputed domain names was the fact that these names were available at the time. Respondent notes that he was the first to register and thus the first to have a legitimate right to use these domain names.
Further, Respondent argues that the fact that ‘bul(l)dog’ is not used by Respondent as a trade name is not relevant given the aforementioned link between the domain names and the services offered by Respondent.
Moreover, Respondent finds that he does have a legitimate interest in the disputed domain names. In that regard, Respondent points out that the website <buldog.com> handles about 1,000,000 visits per day; that since June 8, 2001, there have been more than 518,000,000 visits; and, that the reported turnover for 2003, is € 76,000.00. Accordingly, Respondent argues that he has established a substantial reputation amongst Internet users – as a business – under the name Bulldog. Consequently, Respondent finds that he is using – and at the time of filing the Complaint was using – the disputed domain names in a legitimate, non-infringing manner for a bona fide offering of goods or services.
Respondent finds that it is clear that he did not register and is not using the disputed domain names with the intention of taking advantage of Complainants’ Trademarks. He notes that he uses <buldog.com> as main domain and finds that this illustrates that he is, thus, not trying to take advantage of Complainants. Respondent argues that this is also evidenced by the fact that Respondent does not claim the domain name <buldog.nl>. He notes that Complainants are apparently not interested in this free domain name either, which leaves the question why Complainants want a transfer of <buldog.com>.
As mentioned, Respondent disputes that the Trademarks would be well-known. He argues that even if Complainants’ Trademarks would be considered well-known in the Benelux, this would not necessarily imply that every Dutch citizen – like Respondent – would be aware of Complainants or their activities, even if Respondent only lives 30 minutes from Amsterdam. Again, he notes that Complainants did not supply any evidence to prove otherwise.
Respondent also notes that he started providing his services under the domain name <bulldog.com> in 1997, and that Respondent was never notified, addressed or pointed to any similarity or confusion with Complainants and that Complainants also never objected to his use of the domain names. Furthermore, Respondent argues that, as indicated above, Complainants have not supplied proof of any (damaging) confusion amongst the public. Hence, in the absence of such confusion, Respondent argues that it cannot be said that he is attempting to attract Internet users to his website by creating a likelihood of confusion with Complainants.
Also, Respondent finds that his website does not give the impression that information is supplied or supported by Complainants or any other Bulldog-company in the world and that hence Respondent is not trying to take advantage of the Trademarks.
Respondent underlines again that ‘bulldog’ is a generic term and is used by all sorts of businesses around the world. He argues that, together with this name, similar devices are used, all shaped after the original bulldog. Therefore, Respondent finds that the fact that Respondent is also using a logo of a Bulldog on his website does not automatically infringe any rights of Complainants, nor is this use intended to benefit from Complainants’ business.
Respondent notes that though other reasons to establish bad faith have not been brought forward by Complainants, Respondent did not register the domain names to gain commercial profit by selling or renting the names or to prevent Complainants from registering the domain names themselves or to directly compete with Complainants.
Respondent further notes that Complainants had the opportunity to obtain <bulldog.com> in 1996, but apparently preferred <bulldog.nl> for its commercial area. Respondent finds that the fact that Complainants seem to have changed their mind after nine years and are now trying to obtain this domain name through a UDRP proceeding, constitutes an example of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
Complainants have indicated that they wish the Panel to decide this dispute in accordance with, amongst others, the provisions in the BTA. The Panel notes, however, that the matter at hand is a domain name dispute and that Complainants chose to have this matter decided under the Policy. As far as Complainants’ claims relate to traditional trademark infringement, rather than bad faith under the Policy, the Panel points out that they belong in other fora. Accordingly, the Panel will decide the matter at hand primarily on the basis of the Policy criteria. See also WIPO Case No. D2001-0082 (Compañia Dominicana de Telefonos v. Intercode Telephone Communications); WIPO Case No. DTV2000-0005 (Rodale, Inc. v. Healthology, Inc.); WIPO Case No. D2000-0622 (K2r Produkte AG v. Jeremie Trigano).
Further, the Panel does not agree with Respondent’s argument that the Panel should declare a non-suit against the Complainant, Leidseplein Beheer B.V. as this party is not the owner of (any of) the THE BULLDOG trademarks, but only – and not in all cases – licensee of the Complainant, H.J.M. de Vries. The Panel notes that the Rules provide in paragraph 3(a) that any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and the Rules and also, that these do not foresee any such measure such as declaring a non-suit. Moreover, the extract from the trade register, submitted by Complainants, shows that H.J.M. de Vries is the (sole) managing director of Leidseplein Beheer B.V. Hence Respondent’s argument that Leidseplein Beheer B.V. does not have an interest in being joint-Complainant, as it does not request the Panel to transfer the disputed domain names to its name, but instead to the name of H.J.M. de Vries, will be dismissed.
In order to obtain the relief requested under the Policy, Complainants must prove that each of the three elements of Paragraph 4(a) of the Policy are present:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The differences between Complainants’ Trademarks and the disputed domain names are the general gTLD-suffix “.com,” the addition of the word ‘the’ and/or the omission of one ‘l’.
The Panel agrees with Complainants that the gTLD-suffix “.com” should not be taken into account when assessing whether there is a case of identicality or confusing similarity. See VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Western Bonded Products dba Flex Foam v. Webmaster, Case No. FA0095286.
As regards the fact that the disputed domain names do not incorporate the entire mark of Complainants in the sense that the word ‘the’ is omitted, the Panel finds that this does not preclude a finding of confusing similarity. The Panel takes into consideration that the word ‘the’ is an article and finds that it does not, in itself, distinguish the word ‘bulldog’ from THE BULLDOG. Compare NAF Case No. FA95262 (The J. Paul Getty Trust v. Domain 4 Sale & Company); NAF Case No. FA95246 (Goldmasters Precious Metals v. GoldMasters srl). Moreover, the Panel notes that this defence seems less convincing, since on Respondent’s website repeated use is made of “the buldog” and no use is made of “buldog” without the article ‘the’.
Similarly, the Panel finds that the omission of the letter ‘l’ is a minimal difference between the domain name <bulldog.com> and Complainants’ Trademarks, which is insufficient to overcome a finding of confusing similarity. See WIPO Case No. D2002-0835 (United Airlines, Inc v. United Airline Dot Com).
The Panel is, therefore, of the opinion that the disputed domain names are confusingly similar to Complainants’ Trademarks.
B. Rights or Legitimate Interests
The Panel agrees with Complainant that, as has been held in many previous decisions, a Complainants’ initial burden on this element is light since it is difficult to prove a negative (i.e., that Respondent lacks any rights or legitimate interests in the mark), especially where the rights or interests at issue ordinarily would be within the knowledge of the Respondent, and since Paragraph 4(c) of the Policy describes how a Respondent can demonstrate rights and legitimate interests. Hence, the burden of proof shifts to the Respondent once Complainants make a prima facie showing that the Respondent lacks rights or legitimate interests. See WIPO Case No. D2000-1769 (Neusiedler Aktiengesellschaft v. Vinayak Kulkarni); WIPO Case No. D2000-0704 (Dow Jones & Company, Inc. and Dow Jones LP v. The Hephzibah Intro-Net Project Limited); WIPO Case No. DTV2002-0005 (De Agostini S.p.A. v. Marco Cialone); WIPO Case No. D2000-0648 (Pivotal Corporation v. Discovery Street Trading Co. Ltd.).
The Panel finds that Complainants have, in this instance, made sufficient arguments to satisfy the basic requirements of Paragraph 4(a)(ii) and so it is for Respondent to demonstrate its rights or legitimate interests in respect of the disputed domain names.
The Panel noted Respondent’s arguments under this section in its Response (relating to its “rights and legitimate interests”), that Complainants’ Trademarks were not well known. However, the Panel did not find this relevant to whether Respondent, itself, has rights or legitimate interests in respect of the domain names.
Under Paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a disputed domain name by showing, in particular but without limitation, any of the following circumstances:
(i) its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as individuals, a business, or other organisation) has been commonly known by the disputed name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or servicemark at issue.
Respondent has opined that its usage of the disputed domain names is made in connection with a bona fide offering of goods or services. The Panel agrees with Respondent that the fact that pornography is involved does not automatically disqualify a party from possibly having a legitimate interest. However, also taking into account what will be discussed below regarding bad faith, the Panel is not convinced that Respondent is using the disputed domain names for a bona fide (in good faith) offering of its goods and services.
Respondent admits in its Response that, contrary to the claim on its website, it has not in fact acquired, or even applied for, any trademark or service mark rights. As stated in Paragraph 4(c)(ii) of the Policy, this does not preclude Respondent from being commonly known by the disputed domain name(s). The Panel was not, however, convinced that Respondent, as an individual or entity, is in fact himself, or itself, well-known by the name ‘bulldog’ or ‘buldog.’ Respondent has a different name himself, O.E.W. van der Zwan, and uses a different name, Netcom Service. No supporting evidence was submitted to show that, as an individual or an entity (as compared to the website itself), Respondent is, in fact, so known.
Accordingly, while also taking into account what will be discussed below regarding bad faith, the Panel is of the opinion that Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain names pursuant to Paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainants prove that Respondent’s domain names have been registered and are being used in bad faith.
The Panel is satisfied, and Respondent does not actually deny, that Respondent was aware at all material times of Complainants’ Trademarks. It is not relevant whether every Dutch citizen might know of the Trademarks, nor that market surveys have not been submitted by Complainants.
Complainants’ case here appears to be based on the opinion that Respondent intends to benefit from Complainants’ Trademarks by attracting Internet users to its website under the disputed domain names incorporating the Trademarks. Also, Complainants argue that visitors to the disputed domain names are likely to believe, based on Respondent’s use of the disputed domain names, that the website may have some relationship to or be endorsed by Complainants.
On the question of bad faith, the Panel has considered the various facts and matters raised by Complainants that might lead to such a belief and takes particular notice of the following matters:
- that Complainants’ Trademarks are used widely in a number of different sectors, including cafés, hotels, merchandising products, clothing and other products;
- that use of the Trademarks first started in the early ‘80s and turnover figures relating to use of the Trademarks had reached not insubstantial levels by 2002 (supported by audited accounts for 2002, from the second Complainant’s annual report for 2002);
- that Respondent is located close to the particular city, Amsterdam, where the Trademarks were first used and where they are most well-known;
- that Respondent chooses to use a bulldog device on its website that is almost identical to the device for which Complainants own copyright and various trademark rights;
- that the device on Respondent’s site also displays a “©“ symbol, falsely claiming copyright in a device not substantively different from that originally created and owned by Complainants;
- that Respondent also chooses falsely to claim to have a registration for the trademark “BULDOG,” in the disclaimer on its website. Admitted to be false by Respondent in its Response to this Panel;
- that Respondent chooses to represent itself on its website as an incorporated company, “Netcom Service, Inc.,” when it has disclosed to this Panel that it is not incorporated, but is in fact an individual using the name “Netcom Service”;
- that Respondent chooses to use the definitive article, the word ‘the,’ in front of the word ‘buldog’ in the only three places on its website that relate to content unique to the site (the remainder of the site referring to third party websites and pages):
(i) in the titleline, immediately adjacent to the bulldog device;
(ii) in a sentence “The Buldog Recommends These Outstanding Pay-Sites,” and;
(iii) at the start of the disclaimer at the foot of the website.
The Panel also considered the reasons given by Respondent as to why it chose the disputed domain names, but was not convinced of the absence of bad faith, in particular given the fact and manner of Respondent’s subsequent use of Complainants’ Trademarks on the website itself. The later registration of a domain name with a slightly different spelling, <buldog.com>, and use on the website of “Buldog” with only one ‘l’, does not preclude bad faith for these purposes as the two are still confusingly similar, as already found for the purposes of Paragraph 4(a)(i). Moreover, the registration of mis-spellings, or typosquatting has previously been found to be presumptive of bad faith in itself. See WIPO Case No. D2002-0423 (Dell Computer Corporation v. Clinical Evaluations). The Panel finds that Respondent has not given any specific or logical explanation for the selection of the disputed domain names out of numerous generic indications. The advantage of using a generic name for a porn site does not explain the selection of a domain name quasi-identical to Complainants’ word marks and a device quasi-identical to Complainants’ device mark. The argument of Respondent that ‘bul(l)dog’ would have a customary association with pornography and/or pornographic accessories remains unsubstantiated.
Considering the above, the Panel concludes that there is convincing evidence that Respondent’s selection of ‘bul(l)dog’ for registration and use of domain names was done with the intention of taking advantage of Complainants’ trademarks, i.e., to attempt to attract Internet users looking for Complainants’ business online to the website of Respondent by creating a likelihood of confusion with Complainants. It is not a requirement to show actual confusion and the Panel believes that in this instance that might be difficult to do, the nature of Respondent’s website being such as to make potential witnesses of confusion unforthcoming.
The Panel finds that the disputed domain names were registered and are being used in bad faith.
Respondent’s allegation of reverse domain name hijacking
Respondent alleges in his Response that Complainants are guilty of reverse domain name hijacking. That term is defined in Paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In the present case, the Panel finds that Complainants did not lack a good faith basis for bringing their Complaint. Accordingly, Respondent’s charge of reverse domain name hijacking is dismissed.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <buldog.com> and <bulldog.com>, be transferred to Complainant, H.J.M. de Vries.
Hub J. Harmeling
Dated: June 7, 2004