Boch Imports, Inc. and Boch Imports West, Inc. and Boch New To You, Inc. v. Westboro Motors, Inc.
Claim Number: FA1002001308051
Complainant is Boch Imports, Inc. and Boch Imports West, Inc. and Boch New To You, Inc. (“Complainant”), represented by Kathleen
M. Genova, Massachusetts, USA.
Respondent is Westboro Motors, Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bochhondawest.com> and <bochhondawest.net>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 15, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On February 16, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <bochhondawest.com> and <bochhondawest.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2010, by which Respondent could file a response to the Complaint, via e-mail, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bochhondawest.com and postmaster@bochhondawest.net. Also on February 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <bochhondawest.com> and <bochhondawest.net>, are confusingly similar to Complainant’s BOCH mark.
2. Respondent has no rights to or legitimate interests in the <bochhondawest.com> and <bochhondawest.net> domain names.
3. Respondent registered and used the <bochhondawest.com> and <bochhondawest.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Boch Imports,
Inc., Boch Imports West, Inc., and Boch New To You, Inc., is one of the largest
Honda dealers in the
Respondent, Westboro Motors, Inc., registered the <bochhondawest.com> domain name May 6, 2009 and the <bochhondawest.net> domain name January 28, 2010. Both disputed domain names resolve to template sites with no substantive content or links.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts common law rights in the BOCH mark by
virtue of its successful and continuous use since 1938 and the consequent
establishment of secondary meaning of the mark.
BOCH is well-known throughout
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s BOCH mark. The only differences between the disputed domain names and Complainant’s mark are the additions of the terms “honda” and “west” to Complainant’s distinct mark, the deletion of the spaces between the words, and the affixation of the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel finds that adding generic terms, especially a geographic term or terms that are descriptive of a Complainant’s business, to a Complainant’s complete mark fails to create a new mark and in fact in this case establishes two domain names that have confusing similarity to Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The deletion of spaces and the affixation a gTLD are both irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are not permitted and gTLDs are required in domain names. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Therefore, the Panel here finds that Respondent’s disputed domain names <bochhondawest.com> and <bochhondawest.net> are confusingly similar to Complainant’s BOCH mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations. Once Complainant does so, the burden of proof to demonstrate rights and legitimate interests then transfers to Respondent. The Panel finds that Complainant established a prima facie showing in these proceedings. Respondent’s failure to respond to the complainant allows the Panel to make an inference that Complainant’s allegations are true and to find that Respondent lacks rights and legitimate interests in the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). This Panel elects, however, to consider the evidence in the record, according to the Policy ¶ 4(c), to determine whether the proof suggests that Respondent has such rights and legitimate interests in the disputed domain names.
Complainant alleges that Respondent is not commonly known by the disputed domain names, which would demonstrate a lack of rights and legitimate interests. The WHOIS information for the disputed domain names lists the registrant as “Westboro Motors, Inc.” The Panel finds that the registrant identified by the WHOIS information bears no apparent relation to the disputed domain names, Respondent is not commonly known by the disputed domain names, and, accordingly, lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s disputed domain names both resolve to empty template
pages featuring no substantive content or links. The Panel finds that failure to actively use
the disputed domain names suggests a lack of rights and legitimate interests in
the disputed domain names as template pages are neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info.
SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent
is wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an
active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use of the domain name pursuant to Policy
¶ 4(c)(iii).”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Apr. 12, 2007) (finding that the respondent lacked rights or legitimate
interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint).
The Panel finds that
Respondent has no rights to or legitimate interests in the disputed domain
names and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel considers the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant asserts that Respondent is not actively using
the disputed domain names as the disputed domain names both resolve to template
sites lacking any substantive content.
The Panel finds that such failure to make active use of the disputed
domain names is passive holding and supports findings of bad faith registration
and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos.,
Inc. v. Sech, FA
893427 (Nat. Arb. Forum Feb. 28, 2007)
(concluding that the respondent’s failure to make active use of its domain name
in the three months after its registration indicated that the respondent
registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to
make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant provides evidence that announcements of the
opening of the new Boch Honda dealership, Boch Honda West,
appeared in
The Panel finds that Respondent acted in bad faith in registering and holding the disputed domain names and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bochhondawest.com> and <bochhondawest.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 6, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum