WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boscolo Tours S.p.A. v. Balata Inc.
Case No. D2005-0970
1. The Parties
The Complainant is Boscolo Tours S.p.A, Padova, Italy. The Complainant is represented by Studio Legale Tonucci, Padova, Italy.
The Respondent is Balata Inc, Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name <boscolotour.com> is registered with eNom, Inc (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2005. On September 13, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue who replied speedily the same day and 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 September 22, 2005.
On September 30, 2005, the Center acknowledged receipt of the Complainant’s request of suspensión due to the Respondents e-mail accepting to transfer free of charge the disputed domain name to the complainant. Nevertheless, on October 17, 2005, the Center reinitiated the proceedings due to request of re-institution by the complainant.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2005.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 7, 2005. 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.
The language of the proceeding is English, that being the language or the registration agreement.
4. Factual Background
The Complainant is part of Boscolo group, an internationally well-known tour operator which operates all over the world.
The Complainant owns the Community Trademark BOSCOLO TOURS, registered on April 18, 2002, as well as the Community Trademark BOSCOLO HOTELS, registered on April 22, 2002.
The trademark BOSCOLO TOURS is used, among other activities, in connection with the promotion of the following services: Travel Agencies and Tour Operators, Running of Hotels, Motels, Restaurants and other tourist activities. These services are offered on-line by the Complainant through its websites “www.boscolotours.it”, “www.boscolotours.com” “www.boscolotour.it” and “www.bosocolotour.net”, which have been registered since September 16, 1999.
The Respondent is an Israeli company, which acquired the disputed domain name <boscolotour.com> on September 16, 2004. On September 9, 2005, the Respondent used the contested domain name to provide access to a web-site at which travel services and other services were offered on-line.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The disputed domain name <boscolotour.com> is almost identical or confusingly similar to the trademark and service mark BOSCOLOTOURS, to which the Complainant has exclusive rights based on the corresponding trademark registration. The Complainant argues that the only element of difference is related to the use of the letter “s” in the contested domain name, which is almost imperceptible both visually and phonetically and can misleadingly divert Internet users. The Complainant alleges that the Respondent’s conduct is recognised as “typo squatting”, a behavior addressed by the UDRP.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Boscolotours is not the corporate name of the Respondent (Balata, Inc.), and the Complainant never authorized, licensed or otherwise allowed the Respondent to apply for and/or to use as a domain name the confusingly similar variation of the Complainant’s trade and service mark BOSCOLOTOUR.
The Complainant contends that the domain name was registered and being used in bad faith because by using a domain name confusingly similar to the trademark of the Complainant, the Respondent intends to benefit from the mistyping of the Complainant’s trademark, therefore attracting for commercial gain, Internet users to the site “www.boscolotour.com” by creating a likelihood of confusion with the Complainant’s BOSCOLO TOURS registered trademark.
Furthermore, the Complainant alleges that the disputed domain name appears to have been registered for the purpose of selling the relevant registration to the Complainant or to its competitors, violating paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy, it is necessary that the Complainant prove, as required by Paragraph 4(a) of the Policy, that:
(i) the contested 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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Here, since Respondent has defaulted, it is appropriate to accept the supported assertions of the Complainant and to draw adverse inferences of fact against Respondent.
A. Identical or Confusingly Similar
As stated above, the Complainant has European trademark registration of BOSCOLO TOURS in respect travel arrangement. It is satisfied that the Complainant has trademark rights.
This case is a so-called “typosquatting” case which arises where the domain name is a slight alphabetical variation from a registered mark and which may be qualified as confusingly similar.
In these circumstances, this Panel takes into account previous UDRP decisions relating to this practice of “typosquatting” e.g. Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0627 where experts deem the “typosquatting” to constitute confusing similarity.
Furthermore, Respondent’s expertise in typosquatting has been duly probed in previous domain name decisions e.g. Marionnaud Parfumeries v. Balata Inc, WIPO Case No. D2005-0291 and Wagamama Limited v. Balata.com LLC. Nominet Case No. DRS 02370, <wagamamas.co.uk>.
In the Panel’s view this is the position here. Applying the test to the domain name in issue it finds the domain name to be confusingly similar to the mark BOSCOLO TOURS in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has trade/service mark rights in respect of BOSCOLO TOURS and it has demonstrated to the satisfaction of the Panel that it has built up a significant reputation and goodwill under and by reference to that name and mark. The Complainant asserts and the Panel accepts that the Complainant has granted the Respondent no relevant rights to use its name or any variant of its name in this or any other way.
The Domain Name is a misspelling which has been connected to a website which competes with the Complainant’s website. While one might accept that the Complainant’s trade/service mark, being a name having a strongly descriptive flavour, is a name which a competitor in the field might have come up with independently, the same cannot be said of typosquatting. The use of a misspelling of a famous name immediately raises suspicions and calls for an explanation.
The Respondent has a case to answer, yet the Respondent has provided no answer. In these circumstances, the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the above, typosquatting is by itself strong evidence of bad faith in registration and use of a domain name. This Panel concludes that the Respondent deliberately registered the Domain Name as a misspelling of the Complainant’s trade/service mark and with a view to deceiving Internet users for commercial gain.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meanings of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
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, <boscolotour.com> be transferred to the Complainant
Dated: November 12, 2005