WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Boots Company Plc, Boots Opticians Limited v. Saviles.com LLC, CSC Services
Case No. D2007-0361
1. The Parties
The Complainants are The Boots Company Plc and the Boots Opticians Limited, Nottingham, United Kingdom of Great Britain and Northern Ireland, represented by Hammonds, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Saviles.com LLC, CSC Services, Wilmington. Delaware, United States of America, represented by Val Vivian, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <bootsopticians.com> and <bootsopticians.net> are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2007. On March 14, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On March 14, 2007, Tucows 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 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2007. The Response was filed with the Center on April 10, 2007.
The Center appointed Ross Wilson as the sole panelist in this matter on May 2, 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
The Complainants are subsidiary companies of Boots Group Plc which was established 150 years ago. Boots Opticians Limited was established in January 1987 and provides optical and eye care products and services. It operates out of 287 outlets in the UK and Ireland selling three-quarters of a million pairs of glasses in the 2006-06 financial year. The Boots Company Plc is the owner of a large number of BOOTS trademark in the UK, Europe, USA, Asia and Australia and the BOOTS OPTICIANS trademarks in the UK. The UK trademark for BOOTS OPTICIANS was registered on February 1, 1997. The trademark BOOTS was registered on November 14, 1986 and February 1, 1997 in different classes. The US trademark for BOOTS was initially registered on July 14, 1995.
The Complainants sell BOOTS and BOOTS OPTICIANS products and services through an international business in 14 countries.
The Respondent registered the disputed domain names in 1999.
5. Parties’ Contentions
The Complainants contend that:
(i) The domain names are identical or at least highly similar to the Complainants’ trademarks because:
- the trademark BOOTS OPTICIANS is reproduced entirely in the disputed domain names without any addition; and
- the domain names are highly similar to the BOOTS trademark and are likely to create a risk of confusion in the mind of the public because of the visual, phonetic and conceptual similarities.
(ii) The Respondent has no rights to or legitimate interests in the contested domain names because:
- it does not trade and is not known in the course of trade under the name “Bootsopticians” or “Boots” and does not make any legitimate non-commercial use thereof;
- the Respondent has not been commonly known by the domain names;
- it could not ignore the rights in the well-known trademarks BOOTS and BOOTS OPTICIANS. There is no apparent reason for the Respondent to have chosen the contested domain names other than to take advantage of the fame of BOOTS and BOOTS OPTICIANS and to profit by the traffic generated by the likely initial expectation of internet users that it is a name associated with the Complainants and their trade, goods and services.
- the Respondent has not been authorised by the Complainants to register or use the disputed domain names;
- before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
- the websites of the disputed domain names intend misleadingly to divert consumers to an associated website and in doing so tarnish the trademarks at issue by using them without due cause, damaging the image of the marks;
- the domain names were registered to profit from the reputation attached to BOOTS and BOOTS OPTICIANS trademarks as well as the fame of their owner The Boots Company Plc;
- the Respondent had the Complainants’ trademarks and trade names in mind at the time of registration of the contested domain names;
- the Respondent prevents the owner of the trademark or service mark from registering the mark in corresponding commercial domain names with .com and .net extensions;
- there is no reason to register the domain names <bootsopticians.com> and <bootsopticians.net> other than to take advantage of the identical and similar marks BOOTS OPTICIANS and BOOTS; and
- the Respondent prevents the owner of the trademark or service mark from registering the mark in corresponding commercial domain names with .com and .net extensions.
(iii) the Respondent has registered the domain names in bad faith because:
- the Respondent’s intention was to take advantage of the reputation that the Boots companies benefits from in UK and attracting their UK Internet users by linking its websites to the <contactlensavers.co.uk> website which is associated with the Respondent;
- the domain names redirect internet users to the Respondent’s own website <contactlensavers.co.uk> which refers to several of the Complainants’ products;
the Respondent apparently obtains benefits from the use of the Complainants’ marks in its domain names and then diverts the Complainants’ potential customers to a related website without making it clear that it is not the official Complainants’ website, affiliated with, sponsored or endorsed by it; and
- the circumstances of the case are similar to those used in the Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003: the Respondent has no actual or contemplated good faith use of the domain name; the Respondent has taken active steps to falsify its name; and therefore, taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
The Respondent contends that:
- the domain names are generic and in common use worldwide;
- common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis;
- the domain names are owned and used by an American company and it is believed that there is no American trademark for the domain names;
- the domain names were being used for a bona fide and free consumer guide website;
- it has never made any profit from the websites;
- no agreement with any party has ever been made or entered into by the Respondent, or any correspondence relating to the links in the dispute domain names websites;
- no benefit has arisen to the Respondent from the automated linking systems;
- none of these linking websites make any reference in word or appearance to the Complainants’ website, name or trademarks,
- Saviles.com LLC has no material interest in the website <contactlensavers.com> or <contactlensavers.co.uk> or the company called Contact Lensavers Ltd;
- the domain names were registered in good faith by Saviles.com LLC and by no other company in 1999 and they have never been used by the Respondent in bad faith. The Respondent has not sought to mislead anyone or sought to tarnish any trademark;
- the Respondent denies any relationship to the website <contactlensavers.co.uk> referred to by the Complainants.
Finally, the Respondent contends that the proceeding was brought in bad faith and may constitute an attempt at Reverse Domain Name Highjacking.
6. Discussion and Findings
In order to succeed Complainants must establish:
(i) that the domain name is identical or confusingly similar to a name, trademark or service mark in which it has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or has subsequently been used in bad faith.
The onus is on the Complainants to establish each of the above circumstances.
A. Identical or Confusingly Similar Mark
The Complainants’ rights derive from its UK trademark BOOTS OPTICIAN registered on August 11, 1997. When determining rights in a mark the Respondent’s arguments that the words in the domain name are generic and that there is no registered trademark in the USA are irrelevant under these proceedings.
Apart from the ‘.com’ and ‘.net” extensions, there is no difference between the Complainants’ trademark and the disputed domain names. The use of a gTLD is generally accepted as immaterial when determining whether a domain name is identical or confusingly similar to a trademark (see Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252).
The Panel therefore finds that the domain names are identical to the BOOTS OPTICIAN trademark in which Complainants have rights.
B. Rights or Legitimate Interests
The Complainants’ case for the Respondent’s lack of rights or legitimate interests in the disputed domain name is based on the BOOTS OPTICIANS trademark being well known, that no authorization has been given to register or use the domain names, that the Respondent does not trade under the name Boots Opticians or is commonly known by Boots Opticians, that there is no apparent reason for the Respondent to use the words Boots Opticians and that the Respondent benefits from its free contact lens consumer guide websites through redirecting Internet users to another website in which the Respondent has an interest and which provides competitive products.
The Complainants provided evidence that the disputed websites contain a link to <contactlensaver.co.uk> which uses the same address as the Respondent and was registered by the representative of the Respondent in this dispute. Documents from of an online business directory for UK companies, submitted by the Complainants, show that a company called Contactlensaver Saviles.com LLC, CSC Services is listed with the same address as the Respondent and operating in the contact lens business.
The Respondent refutes the Complainants’ evidence and claims that its free contact lens consumer advice websites have been used in connection with a bone fide offering of goods or services, that it has every right to use generic names on a “first come first serve” basis and that they have been known by the disputed domain names demonstrated by the fact that they have been in use since 1999. Also, the Respondent states that it has never made any profit from the disputed domain name websites.
The Respondent supports its argument about having rights to generic words or common terms by reference to three cases. All cases involved findings that generic names could be used legitimately by others. However, the case referred to by the Respondent are quite specific as to what generic words are capable of being used by others. In Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161 the Panel found that “The word zero is a common word which … may well have been registered by any number of people for any purposes”. In Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 the Panel stated that the generic term ‘smart design’ “was likely to be used by a wide variety of entities in the field of design.” Finally, in Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151 it was found that the generic domain name reflected a name that was likely to have multiple uses.
In the Panel’s view none of the findings about generic names in the above cases can apply to the term ‘Boots Opticians’ which has no equivalent general language use. While the domain names are made up of two generic words, in combination they form a fanciful name that only has meaning in the context of the Complainants business as well as their business name and trademark. In fact, the combined words are not capable of being used in a generic way or are likely to have a multiple number of uses.
Also, in the Panel’s view the Respondent’s claims fail because they are simply based on the claim that the components of the domain names are generic words and that its websites are known by the domain name “bootsoptician”. That may be – but it is not evidence that the Respondent itself is known or has demonstrated legitimate rights to the Boots Opticians name. In circumstances similar to Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903, the Respondent has provided no evidence that it is commonly referred to by the term ‘Boots Opticians’ and the Complainants’ evidence indicates that the domain name is used to redirect Internet users to the another website in which the Respondent has an interest.
In view of the above the Panel finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainants have provided evidence that the websites of the disputed domain names are a ploy to attract Internet users who are redirected to a website in which the Respondent has an interest and which provides competitive products. Clearly, the similarity of the disputed domain name to the Complainants’ trademark is such that it would be confusing to the Complainants’ customers and potential customers and likely cause some disruption to their businesses. Also, this appears to be intentional as it is not likely that the Respondent registered the distinctive name BOOTS OPTICIANS by mere chance.
In the Panel’s view there can be little doubt that the Respondent was aware of the Complainants’ trademark and associated reputation when it registered the Complainants’ trademark as domain names and set about creating websites which contained a link to another site offering competitive contact lenses.
In view of the evidence provided, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
Reverse Domain Name Hijacking
The Respondent has inferred that the Complainants are guilty of reverse domain name hijacking. According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. In other words, wrong and improper or reckless motives are the common factor of the Complaint’s actions.
In Amanresorts Limited v. Melissa Perlman, WIPO Case No. D2003-0383 involving a request for a finding of reverse domain name hijacking, the Panel states that “the real question is whether it should have been clear to the Complainant when it commenced this proceeding, that its position was wholly without merit, and that there was no prospect of the Complaint succeeding”. As in that case, this Panel believes that in commencing the proceeding the Complainants’ motive was reasonable, particularly in view of the investigations undertaken to establish links from the disputed domain names to a related website and drawing out the relationship between the Respondent and the re-directed website.
The Panel finds that the Respondent has not provided sufficient evidence to justify a finding of reverse domain name hijacking.
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 names, <bootsopticians.com> and <bootsopticians.net> be transferred to the Complainants.
Dated: May 16, 2006