Bose Corporation v. Itera c/o Vacheslav Tezikov
Claim Number: FA0610000818438
Complainant is Bose Corporation (“Complainant”), represented by Christopher Finnerty, of Wolf, Block, Schorr and Solis-Cohen LLP, One Boston Place, Floor 40, Boston, MA 02108. Respondent is Itera c/o Vacheslav Tezikov (“Respondent”), Dzerjinskogo 153-49, Saratov 410028, RU.
The domain name at issue is <boseinstitute.org>, registered with EstDomains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2006.
On October 19, 2006, EstDomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <boseinstitute.org> domain name is registered with EstDomains, Inc. and that Respondent is the current registrant of the name. EstDomains, Inc. has verified that Respondent is bound by the EstDomains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 2006 by which Respondent could file a response to the Complaint, 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, and to postmaster@boseinstitute.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <boseinstitute.org> domain name is confusingly similar to Complainant’s BOSE mark.
2. Respondent does not have any rights or legitimate interests in the <boseinstitute.org> domain name.
3. Respondent registered and used the <boseinstitute.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bose Corporation, holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the BOSE mark (e.g. Reg. No. 991,271 issued August 20, 1974; Reg. No. 1,727,482 issued October 27, 1992, Reg. No. 1,828,700 issued March 29, 1994). Complainant utilizes the BOSE mark in connection with its business of manufacturing and selling electronics, electro-acoustical equipment and related goods and services. Complainant includes its BOSE mark in its registered domain name, <bose.com>, which provides information about and access to Complainant’s goods and services to Internet users.
Respondent registered the <boseinstitute.org> domain name on February 25, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring adult content centered around the topic of pantyhose. Respondent’s website also includes links to other third-party websites with adult content.
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."
In view of 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 draw such inferences it 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 that Complainant must 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 has established rights in the BOSE mark through its registration of the mark with the USPTO. The Panel finds that Complainant’s registrations are sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.")
Respondent’s <boseinstitute.org> domain name is confusingly similar to Complainant’s BOSE mark. The disputed domain name includes the BOSE mark in its entirety without alteration and adds the generic term “institute.” The term “institute” does not distinguish the disputed domain name from Complainant’s mark and if anything suggests that the domain name connects to some sort of institute affiliated with Complainant. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant assertion that Respondent lacks rights or legitimate interests in the <boseinstitute.org> domain name establishes a prima facie case for purposes of the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. Respondent failed to avail itself of the opportunity to submit a Response in this dispute, depriving the Panel of evidence or arguments that might support Respondent’s rights or legitimate interests. Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the <boseinstitute.org> domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is not using the <boseinstitute.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is instead using the disputed domain name to redirect Internet users to Respondent’s website featuring adult content and links to other website also presenting adult content. Respondent’s inclusion of Complainant’s BOSE mark in a domain name use in connection with an adult content website has the potential to tarnish Complainant’s mark, and cannot be a bona fide offering of goods or services as outlined in Policy ¶ 4(c)(i). Furthermore, Respondent is presumably receiving pay-per-click referral fees from the links posted on its website and is not using the disputed domain name in connection with a legitimate noncommercial or fair use as outlined in Policy ¶ 4(c)(iii). The Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) or (iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent.”).
There is no available evidence that Respondent is commonly
known by the <boseinstitute.org> domain name. Respondent’s WHOIS information identifies
Respondent as “Vacheslav Tezikov,” a name unrelated to the disputed domain
name. Further, Complainant asserts that
Respondent is not affiliated with Complainant and does not have authorization
to reflect Complainant’s mark in a domain name. The Panel finds that Respondent is not commonly known by the
disputed domain name, and has not established rights or legitimate interests as
contemplated by Policy ¶ 4(c)(i). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <boseinstitute.org>
domain name to redirect Internet users to Respondent’s adult content
website. Internet users seeking
Complainant’s genuine website by using Complainant’s BOSE mark may mistakenly
find themselves instead at Respondent’s website. This redirection has the potential to tarnish Complainant’s mark
and disrupt Complainant’s business because of the adult content found at
Respondent’s website. The Panel finds
that Respondent’s use of the <boseinstitute.org> domain name
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Microsoft Corp. v. Horner,
D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the
complainant’s mark to post pornographic photographs and to publicize hyperlinks
to additional pornographic websites evidenced bad faith use and registration of
the domain name).
Respondent’s <boseinstitute.org> domain name
is confusingly similar to Complainant’s BOSE mark. Internet users seeking Complainant’s genuine
website at the <bose.com> domain name may instead find themselves
redirected to Respondent’s website.
Because of the inclusion of the BOSE mark in the disputed domain name,
Internet users may mistakenly believe that Complainant sponsors or is
affiliated with Respondent’s website.
Respondent is presumably profiting from this misdirected Internet
traffic by collecting pay-per-click referral fees from the links posted on its
website. The Panel finds that such use
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing,
Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002)
(“[I]t is now well known that pornographers rely on misleading domain names to
attract users by confusion, in order to generate revenue from click-through
advertising, mouse-trapping, and other pernicious online marketing
techniques.”); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent utilized a
domain name confusingly similar to the complainant’s mark and used a
confusingly similar pornographic depiction of the complainant’s registered
trademark on its website to cause confusion as to the source or affiliation of
the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boseinstitute.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 1, 2006
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