WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Boucher Group, Inc. v. Nevis Domains LLC
Case No. D2006-1463
1. The Parties
The Complainant is The Boucher Group, Inc., of Greenfield, Wisconsin, United States of America, represented by Boyle Frederickson Newholm Stein & Gratz, S.C., United States of America.
The Respondent is Nevis Domains LLC, of Charlestown, Nevis.
2. The Domain Name and Registrar
The disputed domain name <frankboucher.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006. On November 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming the listed registrant and providing the contact details for the administrative, billing, and technical contact. In response to an email communication from the Center that the Respondent as named in the Complaint did not correspond to the registrant information provided the registrar, Complainant filed an amendment to the Complaint on December 6, 2006. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2007.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 15, 2007. 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
Respondent registered the Domain Name on January 15, 2004.
Complainant is engaged in the business of operating automobile dealerships under the name “Frank Boucher”.
The FRANK BOUCHER service mark, owned by Complainant and in actual use in commerce by Complainant since 1989, was registered with the United States Patent and Trademark Office on September 10, 2002, with registration number 2,616,965.
Complainant also owns several other related service marks, such as BOUCHER, THE BOUCHER GROUP, and GORDIE BOUCHER.
Complainant has used the FRANK BOUCHER mark in connection with automobile dealership services since 1989. Complainant has eighteen automobile dealerships throughout southern Wisconsin, including Frank Boucher Chevrolet, Frank Boucher Chrysler, Frank Boucher Volkswagen and Frank Boucher Lincoln Mercury.
5. Parties’ Contentions
The Complainant contends the following:
The Domain Name <frankboucher.com> is identical to the FRANK BOUCHER service mark in which Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
There is no evidence of Respondent’s use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Respondent is not and has not been known by the name “Frank Boucher”, or “frankboucher.com” or any variation of those names. Respondent also has not acquired any relevant trademark or service mark rights, licenses, or authorizations to use the Domain Name.
Respondent has not made any legitimate non-commercial or fair use of the Domain Name. The website associated with the Domain Name (the “Website”) is a commercial “pay-per-click” website containing links to third-party websites, including those of Complainant’s competitors.
Complainant submits that Respondent had constructive notice of Complainant’s rights in the mark at the time of its registration by virtue of Complainant’s earlier service mark registration and by the name Frank Boucher being used in connection with automobile dealerships since 1989. Therefore, Respondent registered the Domain Name in bad faith.
Respondent intentionally created a likelihood of confusion with Complainant’s mark in order to profit financially.
Respondent has a business agreement with <hitfarm.com>, a “pay-for-click” search company wherein Respondent profits from visitors “clicking through” to other website links listed on the Website. According to a Whois search of <frankboucher.com>, the domain is hosted by the servers “ns1.hitfarm.com” and “ns2.hitfarm.com”.
The Website places links in order of relevancy based on the search queries of users coming to the Website. Thus, the fact that “Frank Boucher Chevrolet” is the first keyword link on the Website demonstrates actual confusion by users looking for Complainant’s products.
Users clicking on the “Frank Boucher Chevrolet link” on the Website are not led to Complainant’s websites, but instead are directed to other websites pertaining to the sale of automobiles.
By using a domain name that is identical to Complainant’s registered service mark and which leads to a website that does not make any attempt to remove confusion, Respondent is intentionally frustrating Internet users looking for Complainant’s website. Furthermore, because many of the links on the Website lead to competitors of Complainant, Respondent’s use of the Website and Domain Name has caused Complainant to suffer a potential loss of customers and disruption to its business activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain names are 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 names; and
(iii) The domain names have been registered and are being used in bad faith.
In referring to authorities, the Panel is also conscious that it is not necessarily appropriate to use the same criteria when comparing a domain name as are used when comparing two trademarks.
A. Identical or Confusingly Similar
To satisfy this element, Complainant must establish it has rights to a trademark or service mark, and that the Domain Name is identical or confusingly similar to such mark. See Policy, paragraph 4(a)(i). As established by prior WIPO UDRP decisions, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark”. America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001). It is also well established that the inclusion of a gTLD in a domain name, such as “.com”, should be disregarded for the purposes of the comparison. Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020 (March 7, 2006).
Complainant has shown that it owns the service mark FRANK BOUCHER in connection with automobile dealership services. The Domain Name incorporates the FRANK BOUCHER mark in its entirety. “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. . . .” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001).
Respondent has not rebutted Complainant’s contention that the Domain Name is confusingly similar to Complainant’s mark. The Panel finds that Complainant has rights to the FRANK BOUCHER mark and that the Domain Name is identical and confusingly similar to Complainant’s mark. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Respondent, by being in default, has not rebutted this.
According to the Policy, a respondent may demonstrate that it has rights or legitimate interests in the disputed domain name by showing that (i) prior to the Dispute, the respondent had used or prepared to use the domain name in connection with the bona fide offering of goods or services; (ii) that the respondent has been commonly known by the domain name; or (iii) that the respondent was “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”. Paragraph 4(c) of the Policy.
The use of a domain name that consists of a search engine and links to other websites is not in itself a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. See e.g., Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004). Complainant has shown that the Website does not offer to sell any goods or services, but merely links to other commercial websites. The Panel notes also that when visiting the website, the visitor is presented with a number of exit pop-ups including links to the car dealers. Thus, the Panel finds that Respondent has neither used nor prepared to use the Domain Name in connection with the bona fide offering of goods or services.
Further, there is no evidence tending to show that Respondent has been commonly known by Frank Boucher or any variation of that name.
Finally, it does not appear that Respondent was “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers”. In fact, as discussed infra, Respondent’s purpose in registering and using the Domain Name appears to be to mislead consumers for commercial gain.
Thus, the Panel finds that the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Policy outlines several circumstances which serve to indicate that a domain name was registered and used in bad faith, including that the respondent intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website, 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 of a product or service on the respondent’s website. See paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent has, in all likelihood intentionally, used the Domain Name for commercial gain by misleading consumers to believe that the Website is affiliated with Complainant. The evidence indicates that Respondent is likely to be in a business relationship with <hitfarm.com>, which pays Respondent for visitors’ clicking on the Website’s links to other commercial websites, many of which are apparently operated by Complainant’s competitors. Complainant has also shown that the links on the Website are automatically arranged in order of frequency of the search queries leading visitors to the website. For example, the fact that the topmost link is labeled “Frank Boucher Chevrolet” indicates that this phrase is the most frequent search term that leads visitors to the Website. Thus, it is clear that Respondent is attempting to profit by misleading Internet users looking for Complainant’s websites or services.
Respondent, in defaulting, has not disputed Complainant’s contentions in this regard.
Therefore, the Panel finds that the third element of the Policy is satisfied.
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 <frankboucher.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: January 29, 2007