WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brunswick Corporation, Brunswick Bowling & Billiards Corporation v. Modern Empire Internet Ltd.
Case No. D2012-1694
1. The Parties
The Complainant is Brunswick Corporation, Brunswick Bowling & Billiards Corporation of Illinois, United States of America, represented by Norvell IP llc, United States of America.
The Respondent is Modern Empire Internet Ltd. of Kwan O, Hong Kong.
2. The Domain Name and Registrar
The disputed domain name <brunswicks.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 24, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on October 1, 2012. 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 Complainant Brunswick Corporation is the parent company of the Complainant Brunswick Bowling and Billiards Corporation. They are therefore related entities and have a common legal interest in bringing this complaint against the Respondent.
The Complainants are leading manufacturers of bowling equipment, aftermarket bowling products and consumer bowling goods. They own approximately one hundred retail bowling centers and first entered the bowling industry more than 120 years ago.
By 1960, the Complainants and their predecessors had opened American-style bowling centers in England, Germany, the Netherlands, Belgium, France, Austria, Mexico, Peru, Sweden, Brazil, Italy, Switzerland, Finland and Australia. The Complainants’ recreational products are now sold in more than 130 countries and its international sales totaled more than USD 1.490 billion in 2011.
The Complainants own various U.S. trademark registrations for the BRUNSWICK mark which they have used exclusively and continuously since at least as early as 1890 in connection with bowling related products and services. By way of example, the Complainants own U.S. trademark registration 1,790,014 for BRUNSWICK, which was registered August 31,1993. This was before registration of the Domain Name on May 20, 2001.
The Complainants maintain an active Internet presence at domain names incorporating the BRUNSWICK trademark, the main corporate website being at “www.brunswick.com’’. This domain name was registered in June 1997. The Brunswick Bowling & Billiards Corporation’s main website is at “www.brunswickbowling.com” and focuses exclusively on the bowling industry. The Complainants also own many other domain names that include the BRUNSWICK trademark.
The Complainants also own various foreign trademark registrations for the BRUNSWICK mark in other jurisdictions e.g. Canada, the European Community, Japan, Brazil, China, and South Korea. Many of these marks were registered before 2001 (the date of registration of the Domain Name).
Extensive promotion and advertising has been undertaken for the BRUNSWICK mark which has come to be associated with goods and services of only the highest quality. The goodwill symbolized by the BRUNSWICK mark in connection with bowling (and billiards) related products and services belongs exclusively to Complainants.
The Complainants generate significant revenue from their bowling related products and services (and generally) and spend tens of millions of dollars advertising and promoting goods and services under the BRUNSWICK mark.
The Complainants have been the subject of widespread articles and reports.
5. Parties’ Contentions
The Complainants’ BRUNSWICK brand is distinctive, famous, and widely recognized around the world.
Given the Complainants’ prominence in the bowling industry, it is clear that any reference to BRUNSWICK for bowling-related products and services would be understood to be a reference to Complainants.
The website associated with the Domain Name states: “Welcome to Brunswicks.com If you’re looking for Bowling Accessories, Bowling Shoes, Game Strategy or anything similar, go ahead and browse our comprehensive resource directory. You ought to find something interesting!” The website is a landing page with links to third party websites and advertisements targeted towards the Complainants’ customers and the bowling industry. For instance, there are links to various bowling products, including bowling accessories, bowling equipment and bowling shoes. If an Internet user selects one of these links they will be directed to a sponsored results webpage for the selected link. There is no re-direction to the Complainants’ websites but rather third party websites, including some unrelated to the bowling industry. When Internet users click on these sponsored results, the Respondent earns revenue through a pay-per-click arrangement.
In addition, the website contains references to Ebonite, Storm Bowling and Dexter Bowling, companies which compete with the Complainants’ BRUNSWICK bowling products and accessories.
The Respondent has chosen to use the Complainants’ well-known and internationally famous BRUNSWICK brand without authorization and in clear bad faith and disregard for the Complainants’ rights. There is no legitimate need for the Respondent to use the Complainants’ registered BRUNSWICK mark, the only reason to do so being to derive revenue from pay-per-click advertising.
The Complainants’ counsel wrote to the Respondent on July 30, 2012, notifying them of the trademark rights in the BRUNSWICK mark, objecting to the Domain Name and demanding the transfer of ownership of the Domain Name to the Complainants. No response was received. Instead, the Respondent changed the content of the website associated with the Domain Name but it still contains references to bowling products and accessories and links to third-party websites.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainants have strong trademark rights in the BRUNSWICK mark. The Domain Name is nearly identical and confusingly similar to the Complainants’ famous Mark. The Domain Name includes as its dominant element the word ‘BRUNSWICK’, which is identical to Complainants’ BRUNSWICK trademark.
The Domain Name illustrates a clear case of typosquatting in that it is a slight misspelling of a trademark designed to divert Internet traffic. All that is different is the addition of a single consonant “s” at the end of “BRUNSWICK”.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent is not affiliated or connected with the Complainants in any way.
The Respondent is unable to show that it has any rights or legitimate interests in the Domain Name:
(1) It did not use the BRUNSWICK name prior to the Complainants’ adoption and use of the BRUNSWICK mark;
(2) It is not using the Domain Name in connection with a bona fide offering of goods. The Respondent is using the Domain Name to divert Internet users looking for the Complainants’ bowling products and accessories with the intention to derive a profit. The website to which the Domain Name resolves is a parking page with links to third party advertisements, including advertisements for products that are offered by the Complainants’ competitors. This cannot constitute a bona fide offering of goods or services;
(3) It is not commonly known by the Domain Name; and
(4) It is not making a legitimate or fair use of the Domain Name. The Respondent’s intentional addition of the consonant “s” to Complainants’ BRUNSWICK mark does not constitute legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The intentional misspelling of a party’s trademark is the obverse of a legitimate commercial or fair use of a domain name. The Respondent’s website contains pay-per-click advertising which generates revenue for the Respondent at the expense of the Complainants, conduct which demonstrates that the Respondent is not engaged in a legitimate noncommercial use of the Domain Name without intent for commercial gain to misleadingly divert consumers.
The Domain Name was registered and is being used in bad faith
The Respondent has acted in bad faith because:
(1) It knew or should have known of the Complainants’ rights in the BRUNSWICK mark prior to registration of the Domain Name. In light of the well-known character of the BRUNSWICK mark, particularly in the area of recreational products, including bowling, it is obvious that the Respondent should have been, and probably was, aware of the mark. Despite this, the Respondent intentionally chose the Domain Name for commercial gain;
(2) Typosquatting constitutes bad faith per se;
(3) It intentionally attempted to attract Internet users to the Domain Name for commercial gain in that the Respondent’s website is calculated to mislead Internet users into thinking that the Respondent has some relationship with the Complainants or that they have approved the use of the Domain Name. The Respondent will have created confusion and the likelihood in the minds of Internet users of an association or affiliation between the Respondent and Complainants, particularly as the Respondent’s website offers the same products as that of the Complainants i.e. bowling products and accessories, and that the content has been directed towards Internet users looking for the Complainants’ bowling products. The Respondent has registered the Domain Name in bad faith with the intention of capitalizing on the Complainants’ fame and reputation. Moreover, the Respondent’s website previously included links to products offered by the Complainants’ competitors.
(4) It has exhibited a pattern of registering domain names that incorporate third party trademarks. To date, the Respondent has been involved in more than 18 domain name cases in the last decade where it was ordered to transfer the domain name in issue to the complainant; and
(5) It failed to respond to the Complainants’ demand letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have rights in the BRUNSWICK trademark. The Domain Name incorporates the BRUNSWICK trademark in its entirety. The mark is clearly the dominant element of the Domain Name. In fact the only difference between the BRUNSWICK trademark and the Domain Name (ignoring the “.com” suffix) is the letter “s” added to the end of “Brunswick”. The Respondent has in fact registered what could be a common misspelling of the BRUNSWICK trademark, a practice known as “typosquatting”. The Domain Name is not therefore identical to the BRUNSWICK trademark but very similar, both phonetically and visually.
Given the distinctive nature of the BRUNSWICK trademark, which is readily recognisable within the Domain Name and very much its dominant element, the Panel is satisfied that the Domain Name <brunswicks.com> is confusingly similar to the Complainant’s trademark, BRUNSWICK.
Moreover, there is a clear risk of actual confusion. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
In the circumstances, the Panel finds that paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, there is no evidence to suggest that the Respondent is known by the Domain Name, nor of any legitimate noncommercial or fair use. In the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the Domain Name resolves, given the links to commercial third-party sites that one finds there.
In any event, it would be difficult for the Respondent to maintain an argument that there has been no intent to mislead. It is likely in fact that the Domain Name was chosen for the very purpose of misleading Internet users into believing that the Respondent is in fact the owner of the Complainants’ mark to which it is almost identical, or that there is some form of association between the Respondent and the Complainants. The fact that a lack of connection might be obvious to some once the Internet user arrives at the Respondent’s website, matters not.
A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a parking page, to which a domain name that so obviously takes advantage of the fame of the trademark to which it is confusingly similar resolves, could be a bona fide offering. Moreover, promoting competing goods or services using a domain name confusingly similar to a complainant’s mark, is not a bona fide offering of goods or services. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said:
“To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001).”
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or participated in any other way in these proceedings. The contentions of the Complainants have clearly made out a prima facie case that the Respondent has no rights or legitimate interests. The burden of production therefore shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. It has not done so and the contentions of the Complainants have not been contradicted or challenged, or cast into doubt.
In short, and as the panel stated in Drexel University v. David Brouda, WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. All the circumstances point to this being the case here.
The Panel finds that the Complainants have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, such circumstances might be evidence of the registration and use of the domain name in bad faith. So too where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
As to the links on the Respondent’s website, in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 it was said:
“Using a domain name ‘to redirect Internet users to websites that host links to external websites, including websites of [c]omplainant’s competitors,’ is evidence of bad faith. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031 (March 5, 2003).”
As to the Respondent’s knowledge of the Complainants’ BRUNSWICK trademark prior to registration of the Domain Name, in Credit Suisse Group v. Freddy Iseli, WIPO Case No. D2002-0794, it was said:
“It has been held that actual or constructive knowledge of the [c]omplainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights….Previous cases have also established that the deliberate choice and registration of a famous mark as [the] domain names suggests, in the absence of an explanation from the [r]espondent, that the registrations were made in bad faith.”
As to typosquatting, as many panels have held in the past, this practice has often been recognized as evidence of bad faith.
It seems clear to the Panel that the Respondent knew of the Complainants’ BRUNSWICK trademark prior to its registration of the Domain Name. It is a widely known mark in very field in which the Respondent used the Domain Name and it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of Domain Name by the Respondent, or to arrive at a conclusion other than that the Domain Name has been registered and used to take unfair advantage of the Complainants’ rights.
Whilst there may be various grounds on which to find bad faith registration and use on the part of the Respondent in a case such as this, for the purposes of this Decision, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of goods or services available through its website. Accordingly, this Panel finds, for the purposes of the Policy, that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <brunswicks.com> be transferred to the Complainant.
Dated: October 25, 2012