WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boing S.p.A. v. Domain Admin, Whois Privacy Corp.

Case No. DTV2020-0002

1. The Parties

The Complainant is Boing S.p.A., Italy, represented by Carlo Sala, Italy.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <boing.tv> (the “disputed domain name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 19, 2020. 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 is Boing S.p.A., one of the main broadcasters of programs for children in Italy and in Spain.

The Complainant owns, among others, the following trademark registrations:

Trademark

Registration Number

Registration Date

Classes

Jurisdiction

BOING (&Design)

004196036

January 25, 2006

35,38, 41

European Union

BOING

M2613299

October 1, 2005

9,38,35,41

Spain

BOING (&Design)

M2627623

February 1, 2006

9,16,28

Spain

BOING

M3559447

September 22, 2015

30

Spain

BOING

2015000039146

December 29, 2016

5

Italy

The data provided by the Registrar shows that the disputed domain name was created on July 26, 2004. The Complainant provided evidence that the Respondent acquired the disputed domain name in 2015. The disputed domain resolves to a website at “ww1.boing.tv” which displays pay-per-click sponsored links related to television programs, series, games and software.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

That the Complainant is a renowned broadcaster of programs for children, such as animation programs and TV series, in Italy and in Spain, since 2004.

That the Complainant owns the trademark BOING which has been registered in Italy, Spain, and the European Union since 2004.

That until September 20, 2010 the first owner of the disputed domain name was a company named “Boing Inflatables Ltd”.

That Boing Inflatables Ltd. was active in the business of manufacturing bouncy castles for children and did not have any connection with the television industry.

That the disputed domain name is registered under the “.tv” country code top-level domain (“ccTLD”), which is generally associated with the television industry.

That after Boing Inflatables Ltd. was dissolved in 2012, the disputed domain name was transferred several times to various third parties.

That since 2007 there have been 44 distinct historical ownership records for the disputed domain name before being owned by the Respondent.

That the Respondent has placed the disputed domain name on sale at a price of USD 5,000 and that it has associated it to a pay-per-click scheme.

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the term “boing”, which is the distinctive part of the disputed domain name, is identical to the well-known trademark BOING of the Complainant.

That the disputed domain name incorporates the Complainant’s BOING trademark with the addition of the suffix “tv” that corresponds to the Complainant’s area of activity.

That the disputed domain name is confusingly similar to the Complainant’s trademark.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name.

That the Respondent has used a proxy registration service to hide its identity.

That the Respondent has no rights to, or legitimate interests in the disputed domain name.

That the Respondent has no connection to, or affiliation with the Complainant, nor has it received any license or consent, express or implied, or has been authorized to use the Complainant’s trademark.

That the Respondent is not the owner of any registered trademark, or the holder of any common law right to the term “boing” or any permutations thereof.

That the Respondent is not commonly known by the disputed domain name, nor is it active in the television industry.

That the Respondent’s use of the disputed domain name suggests that it is trying to attract viewers by free riding on the reputation of the Complainant’s trademarks by referring to its core business.

(iii) Registration and use in bad faith.

That the registration of the disputed domain took place some months before the filing of the Complainant’s oldest trademark application.

That the Complainant has identified 44 distinct historical ownership records for the disputed domain name, which also show that the Respondent registered it in 2015.

That the transfer of a domain name registration from a third party to the Respondent is not a renewal, and that the date on which the current registrant acquired the disputed domain name is the one that the Panel should consider while assessing bad faith.

That the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant or to its competitors, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.

That the web site to which the disputed domain name resolves displays pay-per-click links in Italian such as “Serie TV” and “Giochi per Bambini”, which are related to the Complainant’s core business as they refer to tv series and children’s plays.

That the use of the Complainant’s trademark BOING without any authorization, for the purpose of attracting visitors, may confuse them into thinking that the web site to which the disputed domain name resolves, is in some way endorsed by the Complainant.

That the nature of the links associated to the said web site, which are related to the core business of the Complainant, such as television programs, TV series, children’s plays and animation series, makes it very unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) the disputed domain name is 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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and used in bad faith.

Before evaluating the three elements mentioned above, it is necessary to consider the date on which the disputed domain name was registered by the Respondent. Said assessment shall be based on the publicly available data comprised in the WhoIs registry, as well as on other evidence submitted by the Complainant, and circumstances of the case that are relevant to the current proceeding (see Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading, WIPO Case No. D2008-1029; Capitalmatch Pty Ltd v. Registrar Technician, BestRegistrar.Com, WIPO Case No. D2015-2165).

In accordance with the data provided by the Registrar to the Center, the disputed domain name was registered on July 26, 2004.

The Complainant submitted, as evidence, a comprehensive report prepared by DomainTools on April 28, 2020, which shows that the disputed domain name has historically been held by 44 different owners.

According to the information contained in said report, the disputed domain name was transferred on July 10, 2007 to Boing Inflatables Ltd., based in Bristol, United Kingdom, which company owned it until September 20, 2010. Further records reveal the following registrants: “Whois Privacy Protection Service, Inc.” (from January 14, 2011 to July 24, 2012), “MONIKER / MONIKER ONLINE SERVICES LLC” (from April 10, 2013 to December 17, 2013), “YONI BELOUSOV” (on June 19, 2014), “PRIVACYDOTLINK CUSTOMER 171231” (from September 10, 2014 to April 21, 2015), and finally, the Respondent (since July 20, 2015).

Furthermore, DomainTools captured eight screenshots of different websites to which the disputed domain name has resolved (between March 3, 2014, and March 28, 2019) and documented six records of different servers associated to the disputed domain name (between April 10, 2013 and January 9, 2016).

In the light of the above, the Complainant has proven that the disputed domain name was acquired by the Respondent on July 20, 2015, which, according to the precedents issued under the Policy, is considered to be its date of registration for the purposes of this proceeding. It has been well established by previous panels that the transfer of a disputed domain name to a new registrant, together with a change of its use, are deemed to be a new registration (see riskmethods GmbH v. LEVEL2 LLC / Lever 10 Inc., WIPO Case No. D2019-0286; Capitalmatch Pty Ltd v. Registrar Technician, BestRegistrar.Com, WIPO Case No. D2015-2165; Vita-Cos-Med Klett-Loch GmbH v. Perfect Privacy, LLC / MVB & Associates, Inc. and Theresa Wainright, WIPO Case No. D2014-0978).

A. Identical or Confusingly Similar

The Complainant has submitted evidence showing that it owns registrations for the trademark BOING in various classes, and that it uses said trademark intensively in different countries, including Spain and Italy.

The disputed domain name is identical to the Complainant’s trademark BOING as it incorporates said trademark in its entirety.

The addition of the ccTLD “.tv” to the disputed domain name does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Even though more to the point under the third element of the Policy, the Panel notes here that the ccTLD of Tuvalu is commonly used by entities belonging to the entertainment industry, as “.tv” suggests an association with television industry. Considering that the Complainant is in the business of broadcasting programs for children, such as animation programs and TV series, the conjunction of the trademark BOING and the ccTLD “.tv” constitutes a high risk of confusion among Internet users looking for the Complainant (see Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc. WIPO Case No. DTV2008-0010; Koninklijke Philips Electronics N.V. v. Alan Horswill, WIPO Case No. DTV2002-0004; Channel Television Limited v. Legacy Fund LLC / Protected Domain Services Customer ID: R-3108040, WIPO Case No. DTV2011-0008).

The first element of the Policy has been met.

B. Rights or Legitimate Interest

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has argued that the Respondent has no rights to, or legitimate interests in the disputed domain name. Furthermore, the Complainant has stated that the Respondent has no connection to, or affiliation with the Complainant; that it has not obtained any license or consent, express or implied, to use the trademark BOING, and that the Complainant has not authorized the Respondent to use said trademark. None of these affirmations has been challenged by the Respondent.

Currently, the disputed domain name resolves to a website at “ww1.boing.tv” which displays pay-per-click sponsored links, related to online games and children’s contents in English and Italian, such as: FREE GAME PC, BOING TV, GIOCHI X BAMBINI (in English: games for children), GIOCHI GRATIS ONLINE IT (in English: free online games IT), FREE GAME, FREE SOFTWARE. Apart from the latter, according to the evidence submitted by the Complainant, in the past, this web site also displayed the following links: CARTONE and CARTONI (in English: cartoon and cartoons).

Furthermore, the website, to which the disputed domain name resolves, displays a hyperlink that says: “Click here to buy this domain”. After clicking on said hyperlink, the Internet user is redirected to “www.sedo.com”, where the disputed domain name is auctioned at a starting price of USD 500.

The majority view among the UDRP panels is that the use of a domain name to display pay-per-click links may be permissible in some circumstances, but would not in and of itself confer rights to, or legitimate interests in a domain name, or conform a bona fide offering of goods or services, or from a legitimate noncommercial or fair use of the domain name (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344).

In the present case, the Panel notes that the links displayed on the web site to which the disputed domain name resolves are related to the television and entertainment industry, particularly to content intended for young audiences, which is the core business of the Complainant. Moreover, some of the links feature phrases written in Italian, the language spoken in the country where the Complainant is based, and make references to products as specific as games and programs for children, or cartoons. Lastly, the ccTLD “.tv” is very closely associated to the industry to which the Complainant belongs (see section 2.14 of the WIPO Overview 3.0; see also Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302). Moreover, the disputed domain name is identical to the Complainant’s trademark BOING disregarding the ccTLD suffix, which carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

In the light of the above, the use of the disputed domain name by the Respondent cannot constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use, as the Respondent is unduly profiting from the trademark BOING and the goodwill associated to the Complainant (see Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).

The Panel considers that the Respondent took advantage of the disputed domain name with an intent to mislead customers looking for the Complainant, for commercial gain. Such conduct cannot be deemed to have taken place in good faith, and therefore cannot confer any rights to, or legitimate interests in the disputed domain name (see Richemont International SA v. Turvill Consultants, WIPO Case No. D2014-0862; Minerva S.A v. Ozril Peters, WIPO Case No. D2018-2177).

Thus, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its web site or location.

The Complainant has established its rights over the BOING trademark, which go back to dates of registration significantly preceding the date of acquisition of the disputed domain name by the Respondent (which date, according to the precedents issued under the Policy, is deemed to be the date of registration of the disputed domain name for the purposes of this case). Furthermore, the disputed domain name consists of the Complainant’s BOING trademark with the addition of the ccTLD “.tv” that is perceived to be a designation or evocation of the television business.

In the light of the above, and taking into account the public nature of the Complainant’s services, and the extensive presence of the BOING trademark in the market, the Panel considers that the Respondent knew about the Complainant, its trademark, and its core business when acquiring the disputed domain name. This suggests that the registration of the disputed domain name was carried out with opportunistic bad faith (see Section 3.2.1 of the WIPO Overview 3.0; see also Awesome Events Limited v. Ben Loyd Holmes, WIPO Case No. D2017-0517, Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391).

As to the use of the disputed domain name, the evidence comprised in the case docket shows that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark BOING as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which, according to paragraph 4(b)(iv), constitutes bad faith (see Accenture Global Services Limited v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-2861; adidas AG v. Domain Administrator, Fundacion Privacy Services LTD., WIPO Case No. D2019-2431), especially considering that the hyperlinks displayed on the web site to which the disputed domain name resolves generate pay-per-click revenue (see Dreamstime.com LLC v. Domain Vault, Domain Vault LLC, WIPO Case No. D2018-1787; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623).

Accordingly, the third element of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <boing.tv> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: July 4, 2020