WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Boxing Council v. Blogging, Saad Sulari / Domains By Proxy, LLC, Registration Private
Case No. D2014-2162
1. The Parties
The Complainant is World Boxing Council, of Mexico City, Mexico, represented by Bauman, Dow & León, P.C., United States of America.
The Respondent is Blogging, Saad Sulari, of Lahore, Punjab, Pakistan / Domains By Proxy, LLC, Registration Private of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wbcbelts.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 23, 2014.
The Center verified that the Complaint together with the amended 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 December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2015.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 4, 2015. 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 was established in 1963 and is in the business of sanctioning world championship boxing bouts and marketing its trademark through clothing, namely championship belts. Since 1963, the Complainant has worked countless hours establishing its trademark and recognition worldwide. The Complainant has its own merchandising programs that sell and distribute authorized WBC merchandise.
The Complainant is the owner of various trademarks such as WBC and WORLD BOXING COUNCIL before the United States Patents and Trademarks Office.
Also, the Complainant is the owner of several domain names including the term WBC, e.g.: <wbcboxing.com>.
The disputed domain name was registered on March 17, 2014 and is used to sell championship belts modeled after WBC belts. Further, the Respondent states on its website that its boxing belts are, in fact, WBC replica belts.
At the time of this decision, the disputed domain name redirected to the “www.allboxingbelts.com” website. This website sells championship belts modeled after WBC belts, even stating that they are WBC replica belts.
5. Parties’ Contentions
The Complainant states that the disputed domain name <wbcbelts.com>, as well as the text and logo used at the website are confusingly similar to and so tarnish and dilute the Complainant’s registered trademarks.
The Complainant argues that the disputed domain name <wbcbelts.com> incorporates the Complainant’s trademark WBC, with the mere addition of the word “belts”, which is not sufficient to distinguish the disputed domain name from one that may be legitimately associated with the Complainant. The Complainant also alleges that the infringing website bears the WBC logos, which are all trademarks registered in the United States and established worldwide.
The Complainant affirms that the disputed domain name is confusingly similar to its registered trademarks, and that the confusion to consumers is augmented, as the infringing website sells championship belts modeled after WBC belts, even stating that they are in fact WBC replica belts. The Complainant states that this implied association creates confusion with consumers who may be led to believe that the products are approved or permitted by the Complainant.
The Complainant adds that there is no bona fide offering of goods or services.
The Complainant states that, considering the content of the website, the disputed domain name disrupts the business of the Complainant by creating a likelihood of confusion amongst consumers for the purpose of commercial gain. The Complainant affirms that the website diverts consumers from its own website and WBC-approved merchandise.
The Complainant also notes that the Respondent registered the disputed domain name through a proxy registrant, which would further evidence its intent to deceive patrons to the website of its legitimacy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s WBC mark. The Panel also finds that the mere addition of the word “belts” is not enough to distinguish the disputed domain name from one that may be legitimately associated with the Complainant and to escape a finding of confusing similarity. In fact, the website bears the WBC trademarks, which are duly registered by the Complainant in the United States.
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the fact that the Respondent chose not to file a Response to the Complaint, this Panel finds that there is nothing to suggest that the Respondent has or might have rights or legitimate interests in respect of the disputed domain name. In fact, previous decisions under the Policy have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
Additionally, the Panel has observed that the Respondent makes a disclaimer on the website stating that it is “a privately owned website not owned or operated by any Boxing council”. However, such disclaimer present at the very end of the page, when compared to the prominent presence of the Complainant’s trademarks throughout the website and in the disputed domain name, is not sufficient to avoid diverting Complainant’s consumers, since by the time the user reaches and reads any disclaimer under the disputed domain name, any objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.
In Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, the Panel states that “Respondent has not denied, and cannot credibly deny, that its use of the domain names at issue was to attract internet users desirous of criticizing the Complainant or its products, and therefore likely divert them from legitimate sites authorized by Complainant. The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion.” Similarly, in Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316,the Panel explains that “Nevertheless, on the home page itself, the disclaimer is still below the place where a customer would click to order Respondent’s product. There are at least two reasons why this disclaimer is not effective. First, it comes after a full page of marketing where the ‘Antabuse’ name appears many times. Second, the disclaimer appears only towards the bottom of the home page, after the customer’s ordering option.” Lastly, in Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920, the Panel states that “Thus, the Panel finds that Respondent's disclaimer alone as well as in the context of the landing page fails to serve an effective purpose as required by Oki Data. Even if the Panel were to consider the text of the disclaimers effective in disabusing visitors of any confusion once they arrive at Respondent's site, they clearly do not offset the obvious risk of ’initial interest confusion.’ It is highly likely that many of those encountering the Domain Names through a search engine will believe that the landing pages belong either to Complainant or a licensee or authorized distributor.”
In view of the above, as the Panel cannot find any indication of any circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the disputed domain name, which reproduces the Complainant’s famous WBC trademark. It is highly unlikely that the Respondent was not aware of the Complainant’s rights in the trademark WBC when the disputed domain name was registered, which can be supported by the content on the website which shows that the Respondent had knowledge of the Complainant’s trademark.
The allegations of bad faith made by the Complainant were not contested, as the Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that the trademark WBC has been in use long before the disputed domain name was registered, including in the Complainant’s own domain names. For such reasons, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name.
There are no facts set out in the available record which could conceivably justify the registration of the disputed domain name by the Respondent.
Furthermore, the Respondent has registered the disputed domain name through a proxy registrant, which as the Panel stated in The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / "The Saul Zaentz Company", WIPO Case No. D2008-0156, “Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’.”
In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, for the purpose of commercial gain.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <wbcbelts.com> be transferred.
Date: February 18, 2015