Borla Performance
Industries, Inc. v. Faster Than Them Corp
Claim Number: FA0705000977479
PARTIES
Complainant is Borla Performance Industries, Inc. (“Complainant”), represented by Terry
Middlebrook, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <borladirect.com>, registered with Go Daddy
Software, Inc.
PANEL
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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 7, 2007.
On May 4, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <borladirect.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 10, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 30, 2007 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@borladirect.com by e-mail.
A timely Response was received and determined to be complete on May 30, 2007.
An Additional Submission was received from Complainant on June 4,
2007. The Additional Submission was
timely and received in accordance with the National Arbitration Forum’s
Supplemental Rule 7.
On June 6, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that the contentious
domain name <borladirect.com> should no longer be
registered with the Respondent but that it should be transferred to the
Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademark BORLA, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on its registered BORLA trademark and says that the domain name is confusingly similar to it, because the Respondent has simply taken the entirety of the trademark and added the generic or common word ‘direct,’ which does not make any distinction between the goods of the Complainant and goods being promoted by the domain name. This, it says gives rise to inevitable confusion with the Complainant’s trademarked products.
The Complainant contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the Respondent has no connection to the Complainant as trademark owner, the Respondent’s use of the trademark in its domain name is a breach of trademark law and the Respondent had notice of the Complainant’s trademark rights before it registered the domain name. Moreover, the Complainant contends that, on the known facts, the Respondent could not bring itself within any of the provisions of paragraph 4(c) of the Policy to establish a right or legitimate interest in the domain name.
Finally, the Complainant contends that the domain
name was registered and is being used in bad faith. It contends that this is so because the
domain name contains the Complainant’s entire mark, the Respondent obviously
intended to mislead the public and to divert online traffic from the
Complainant to its, the Respondent’s website, the very use of the domain name
by someone with no connection to the Complainant suggests opportunistic bad
faith and because, despite complaint, the Respondent has continued to use the
domain name without authority. Moreover,
the Complainant contends that the Respondent is using the Complainant’s
trademark to compete with it and its alleged disclaimer of any affiliation with
the Complainant is of no effect.
B. Respondent
The Respondent contends that the Complainant’s case has no substance
because its website makes it plain that it is not affiliated with the
Complainant, a proposition which is reinforced when online customers come to
checkout, because at that point they are obliged to acknowledge that this is
the case.
In this regard the Respondent contends that it is not trying to confuse
customers into thinking it is the actual Borla company, but rather it is
stating the fact that it is a direct source for customers to buy Borla
products.
In support of this it contends that its website does not copy the Borla
site, but is unique to itself, so no-one is confused.
Moreover, it does not state anywhere on the website that it is an
authorized Borla dealer and it declares that it is not connected with Borla.
For those reasons, the Respondent in effect contends that Complainant
has failed to make out its case of alleged non-compliance with the Policy.
C. Additional Submissions
Additionally, the Complainant denies that the Respondent’s website
requires a customer on checking out of the site to acknowledge that the
Respondent is not affiliated with Borla. Moreover, the terms and conditions of
its Internet transactions require customers to acknowledge that images and
related presentations on its website are the property of <borladirect.com>, which they are not, for they are the
property of the Complainant and depict the Complainant’s products.
FINDINGS
The Complainant is a well-known
It is the registered owner of Trademark
Registered Number 1,999,497, which was registered by the Complainant with the
United States Patent and Trademark Office on September 10, 1996 for BORLA. As it has used the name in its business since
1979 it has also acquired common law trademark rights in the BORLA mark.
The Respondent is a reseller of Borla
products, but it does not purchase the products from the Complainant and is not
one of the Complainant’s authorized dealers. It uses the disputed domain name to resolve to
its website where potential customers may choose from a wide range of Borla
products, order and pay for them and have them delivered.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel
will therefore proceed to examine each of these requirements in turn.
The Panel finds that the domain name <borladirect.com> is confusingly similar to the trademark BORLA, which has been wholly incorporated into the domain name and to which the word ‘direct’ has been added.
In that regard, it has been held many times that the addition to a trademark of a common or generic word or a term which does no more than describe some aspect of the trademarked goods, will not negate a finding of confusing similarity that is otherwise present on the evidence. Thus, in Dr. Ing. h.c.F. Porsche AG v. Brown, D2001‑0919 (WIPO Sept. 15, 2001), it was held that the domain name <porscheimporter.com> was confusingly similar to the trademark PORSCHE because, as the Panel said:
…The combination “Porsche Importer” uses Complainant’s mark as the principal identifier of a business that engages in trade of Complainant’s products. [There is thus]… a likelihood that the public, viewing the domain names, will draw that conclusion that Complainant is the enterprise that is undertaking to provide the subject products. The public [in this case Internet users] will be confused as to the source of the products or sponsorship of the activities.
Likewise, in the present case, at least some members of the public would conclude from the domain name that it is the Complainant that is undertaking to provide directly the BORLA goods referred to in the domain name, which of course it is not. There is therefore a confusion added to the similarity already created by virtue of the use of the entire trademark in the domain name.
A case even more directly in point, for it involved a domain name that incorporated the generic word “direct,” is that cited by the Complainant, Victoria’s Secret v. GU, FA 096311 (Nat. Arb. Forum Feb. 8, 2001). The panel in that case held that the domain name <victoriassecretdirect.com>, incorporating as it did the entirety of the relevant trademark, to which was added the generic word “direct,” was for that reason confusingly similar to the trademark. For the same reason, a similar conclusion must be reached in the present case.
The Respondent in the present proceedings, however, claims that because the word “direct” “…is a broad and general term … some may assume (it) to be something it is not…”
The test, however, is what the objective bystander would deduce from reading the domain name. In the opinion of the Panel, the objective bystander could only conclude that the domain name <borladirect.com> was the domain name of the owner of the famous BORLA trademark and that it would lead to its website, neither of which conclusions would be correct. Accordingly, not only is the domain name similar to the trademark, but it is confusingly so.
It has also been held many times that suffixes such as “.com” may not be used to negate a finding of confusing similarity that is otherwise present on the evidence, as it is in the present case.
The Complainant has therefore
established that there is a confusing similarity between the domain name and
the trademark referred to above and, as the Complainant is the owner of the
trademark, it has accordingly made out the first of the three elements that it
must establish.
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Respondent does not rely specifically on
any of these paragraphs of the Policy, but it is clear enough from its Response
how it contends that it has a right or legitimate interest in the domain name. It acknowledges that it has registered the
domain name using the Complainant’s trademark and that it uses the domain name
to support a website that sells the Complainant’s products, which are
automotive parts, in particular headers, mufflers, exhaust systems and exhaust
parts for many different brands of motor vehicles. Its modus
operandi appears to be to enable the ultimate purchaser to buy the
Complainant’s products not from the Complainant or from its authorized dealers
but from the Respondent without the intervention of the Complainant or its
dealers.
The Respondent concedes that it is not an
authorized dealer of the Complainant, but claims that its use of the domain
name to sell its products is legitimate because it does not pretend to be the
Complainant or to be authorized by it and that, indeed, it goes out of its way
to make it clear that it is not so authorized or affiliated with it, but that
it is independent of the Complainant.
In effect, therefore, the Respondent is arguing that it has been using the domain name in connection with a bona fide offering of goods and services and that this brings it within paragraph 4(c)(i) of the Policy or, alternatively, that on general principle those facts show that it has a right or legitimate interest in the domain name.
The bona fide offering of goods and services that it relies on is advertising on its website that it sells Borla exhaust parts. As it says in its submission to the Panel:
“…we are a direct source for them to by (sic) ‘Borla products’.”
This process is beyond doubt the offering of goods. But is it a bona fide offering of goods?
Opinions have differed on this question. It has generally been thought that such a practice could not be bona fide because a party in the position of the Respondent is really making an unauthorized use of the other party’s trademark to promote its own business. The Respondent in the present case has admittedly been using the <borladirect.com> domain name to sell the Complainant’s products, without authorization by the Complainant to do so.
It would be consistent with this view to conclude that such a use does
not confer rights or legitimate interests to the Respondent under paragraph 4(a)(ii) of the Policy; see Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent
lacks rights in the disputed domain names because Respondent competes with
Complainant by selling Complainant's used parts without a license from
Complainant to do so.”); see also DaimlerChrysler AG v. Autoparts Web
Solutions, FA 676663 (Nat. Arb. Forum, May 25, 2006).
Moreover, the Complainant has made out a good case,
supported by UDRP decisions, as to why that conclusion would be justified. It has
shown that the Respondent’s use of its well known trademark, so as to give rise
to confusion, negates any claim to a legitimate interest in the domain name (Household Int’l,
Inc. v. Cyntom Enters., FA 95784 (Nat. Arb
Forum, Nov. 7, 2000)) and that the actual and constructive notice the
Respondent must have had of a trademark registered 30 years before the domain
name and the fact that the Respondent allegedly used copyright photographs of
the Complainant’s products on its website as in Dermalogica, Inc. & Int’l Dermal Inst., Inc. v. Raj Sukkersudha, FA 811693 (Nat. Arb. Forum, Nov. 14,
2006), all contribute to the same result.
That approach, however,
was disturbed in 2001 by the decision in Oki Data
In that
proceeding, it was decided that a ‘reseller’, meaning an authorized sales or
service agent, was making a bona fide
offering of goods and services when it used its principal’s trademark in a
domain name to advertise its own services, which involved selling the
principal’s products or its spare parts.
Those circumstances, it was said, gave the reseller a legitimate
interest in the domain name sufficient to defeat a claim by the trademark
owner. It will be seen, therefore, that
this was a significant decision and it has been followed and developed by some
UDRP panelists in recent years. Other
panelists, however, have regarded it as an unwarranted restriction of the
rights of trademark owners.
In
support of this view, the panel noted that the same principle had been applied
in Experian Info. Solutions,
Inc. v. Credit Research, Inc., D2002-0095 (WIPO
May 7, 2002) and in other decisions.
The panel also noted that because of the decisions in DaimlerChrysler A.G. v. Drummonds,
D2001-0160 (WIPO July 11, 2001), Philip
Morris Inc. v. Tsypkin, D2002-0946 (WIPO Feb. 13, 2002) and Dr. Ing. h.c. F.
Porsche AG v. Del Fabbro Laurent D2004-0481 (WIPO Aug. 20, 2004),
…the OKI Data principles have even been
applied where there has been no contractual relationship between the domain
name registrant and the trademark owner, despite the fact that in Oki Data itself, the Respondent was an
approved Oki Data representative.
But even when the Oki
Data principles have been recognized and applied, they have always been
acknowledged to be subject to some very significant conditions and limitations.
The two most important of these
conditions are that, as it was put in Oki
Data itself, for a transaction be bona
fide,
- Respondent must use the site to sell only the trademarked
goods; otherwise, it could be using the trademark to bait Internet users and
then switch them to other goods. Nikon, Inc. v. Technilab, Case No.
D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell
Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait
and switch is not legitimate); and
- The site must accurately disclose the registrant’s
relationship with the trademark owner; it may not, for example, falsely suggest
that it is the trademark owner, or that the website is the official site, if,
in fact, it is only one of many sales agents. E.g.,
Houghton Mifflin Co. v. Weatherman, Inc.,
Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where
website’s use of Complainant’s logo, and lack of any disclaimer, suggested that
website was the official Curious George website); R.T. Quaife Engineering v. Luton, Case No. D2000-1201 (WIPO Nov.
14, 2000) (no bona fide offering because domain name <quaifeusa.com>
improperly suggested that the reflected site was the official U.S. website for
Quaife, an English company; moreover, respondent’s deceptive communications
with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., Case
No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested
that it was the manufacturer of complainant’s products).
Accordingly, the use of the domain name by a reseller will be legitimate if it promotes solely the goods of the
trademark owner, but if it is used as a guise to promote other brands of goods
and services as well, which will not be in the interests of the trademark
owner, that use of the trademark will be illegitimate. Moreover, the true role
and capacity of the domain name holder must be made clear on the website and
not dissembled.
Applying the Oki Data
principle with these important qualifications, the Respondent in the
present proceedings cannot rely on them to show a bona fide offering of goods and services, or a right or legitimate
interest in the domain name.
That is
so for the following reasons. First,
Exhibits F1, F2 and F3 attached to the Complaint are printouts, made on various
days before the Complaint was filed, of the website of the disputed domain name
<borladirect.com>. Those printouts show that at the time they
were taken, the website was apparently being used to sell only Borla products. However, the website as it is presently
constructed sells not only Borla products, but also the products of AllExhaust.com,
CorsaDIRECT.com and FlowmasterDIRECT.com. If for example, the user clicks on
FlowmasterDIRECT.com, the user is taken to an extensive offering of Flowmaster
brand goods. So far as the Panel is able
to tell, that company is an entirely different entity from the Complainant and
its products therefore do not come within the description in Oki Data of “only the trademarked goods”
that may be sold on the website.
It
follows that the Respondent is using the Complainant’s trademark BORLA in its
domain name for the purpose off selling products other than Borla products. Not only does this put the Respondent outside
the protection of the Oki Data
principles, but such use of a trademark has never constituted bona fide conduct or given rise to a
right or legitimate interest in the domain name.
Indeed, the structure of the Respondent’s website invokes the very concern identified in Oki Data, namely that internet users may be attracted to <borladirect.com> by the Borla name and then switched to buying rival products which are also being promoted on the website.
Secondly,
the Respondent’s website does not, within the meaning of Oki Data, “accurately
disclose the registrant’s relationship with the trademark owner…[for it] falsely suggest[s] that it is the trademark
owner…” That is so because, as has
already been pointed out, the expression <borladirect.com>
will be taken by some users to mean that it provides the Internet user with
direct access to the Complainant itself, to Borla products directly, that is to
say directly from Borla and not directly from someone else like an agent or,
alternatively, that the Borla products sold by the Respondent have been
obtained directly from the Complainant, none of which propositions is true. In other words, the domain name in the present
case does not accurately describe the status of the registrant and on one view
suggests that it actually is the trademark owner itself.
Moreover,
the colour scheme and type font used in the Respondent’s website, although not
identical, are sufficiently similar to those used in the Complainant’s official
site, as to give rise to the impression that they are affiliated websites,
which they are not.
These
factors go to enhance the notion that the Respondent is the Complainant itself
or that the Respondent’s website is affiliated with the Complainant’s site and
they do nothing to disabuse the viewer of such an impression.
The disclaimer
To this,
the Respondent says that its website “clearly states to every customer at the
top of every page and the bottom of every page, that we are not affiliated with
Borla Performance industries in any way. Also a customer cannot checkout
without being told that they agree to the fact that this is the case.”
The
Respondent also contends that “Granted ‘Direct’ is a broad and general term
that some may assume to be something it is not, however, we dispel this by
telling every customer we are not Borla many times.”
The
disclaimer at the top of each page of the website is as follows:
“BorlaDIRECT.com
An independent Dealer of Borla Parts”
The
disclaimer at the bottom of each page of the website is as follows:
“Copyright ©
2002-2007 Borla Direct Authentic, Retail Direct, Wholesale and Discount Borla
Exhausts, Borla Mufflers, Borla Exhausts Tips and Wholesale Borla Exhaust
Systems all on sale with same day shipping. BorlaDIRECT.com is an independent
dealer of Borla Performance Industries products.
BorlaDirect.com
is not affiliated with Borla Performance Industries.
BorlaDirect.com
is a dealer of their fine Borla Exhaust products.”
It is
clear that in appropriate circumstances a disclaimer may be used to show that a
respondent’s use of a domain name was bona
fide and hence that it gave rise to a right or legitimate interest in the
domain name. Thus, in Am.
Online, Inc. v. Anytime Online Traffic Sch., FA 146930, (Nat. Arb. Forum, Apr. 11, 2003) the disclaimer
“Anytime Online is not affiliated with, sponsored by, or associated with
America Online, Incorporated” was held to show just such a bona fide use. Whether a
disclaimer will be held to be effective will depend on all of the circumstances
in a given case and on the overall impression of whether it achieves the
purpose claimed for it.
However,
the problem faced by the Respondent in the present case is that it has used the
actual name of the trademark owner in the website, which raises the initial inference
that the website is the website of the trademark owner and Complainant and it
has then strengthened that suggestion by using the word “direct,” implying that
the domain name is a means of dealing directly with the Complainant.
In the
present case, in the view of the Panel, neither disclaimer is effective. That is so because when the Respondent
describes itself as an “independent dealer,” it does not deny an affiliation
with, sponsorship from, or association with the Complainant; authorized agents
could just as easily describe themselves as “independent dealers” and the Internet
user could well assume that the Respondent was an authorized dealer.
Moreover,
the disclaimer at the bottom of the page is misleading, for it suggests again
that dealing with the Respondent is dealing directly with Borla and will lead
to buying goods directly from Borla, neither of which is true. Indeed, it exacerbates the situation by
apparently claiming that it is a wholesaler of the Complainant, which it is
not.
Furthermore,
whilst it is true that the disclaimer goes on to state that “BorlaDirect.com
is not affiliated with Borla Performance Industries,” that statement comes well
after all of the substantive information on the page has been presented to the
user and after the interactive features of the website may have be activated
and used. It is therefore extremely unlikely that those words would either be
seen by the user or have any effect.
Finally,
the last words of the disclaimer negate any effect that it might otherwise have
had. Those words are:
BorlaDirect.com is a dealer of their fine Borla Exhaust
products.
The words “Borla Exhaust” are a highlighted link, which implies that it is a link to some official Borla channel, as the Panel assumed it was and was meant to be. At least some users may click on the link to verify the bona fides of the Respondent or to see what other information the official site has to offer on the status of the Respondent. The link, however, does not take the user to any official Borla information, but reverts directly back to the website <borladirect.com>. This process is clearly capable of misleading at least some users of the Respondent’s website.
These
factors lead the Panel to the conclusion that the disclaimer is of no effect
and cannot be used to show that the Respondent has made a bona fide use of the domain name through its website.
For these reasons, the Respondent has not been able to show a bona fide offering of goods and services before the dispute was brought to its notice. It therefore cannot avail itself of the benefit of paragraph 4(c)(i) and, as it does not rely on and could not bring itself within the other provisions of that paragraph, it has been unable to show that it has a right or legitimate interest in the domain name.
The
Complainant has therefore made out the second of the three elements that it
must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 respondent’s website or location or of a product or service on the site or location.
The starting point in this inquiry must surely be that the Respondent must be presumed to have known of the Complainant’s prominent BORLA mark. Indeed, that must be the reason why it registered the domain name in the first place.
That being so, it could not have chosen or used the word “borladirect” in its domain name for any reason other than to trade on the BORLA name. Moreover, as has already been said, the purported disclaimers on the website were ineffective and it must therefore be inferred that the domain name was registered to confuse Internet users and by that means to attract them to a website with a name which is substantially the same as that of the prominent mark. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of both paragraphs 4(b)(iii) and (iv).
The Complainant relies on sub-paragraphs 4(b)(i) and (iv) and on the additional argument that “Respondent has registered Complainant’s entire trademark in the disputed domain name without plausible good faith” to make out its case of bad faith.
The Panel’s view is that the facts bring the case squarely within both paragraph 4(b)(iv) and that accordingly it is not necessary to consider other arguments.
The case comes within sub-paragraph 4(b)(iv) for the following reasons. First, the Respondent does not deny, but positively asserts in its submission, that the way it conducts its business is to attract Internet users to its website so that it can get business from them. Secondly, there is no doubt that the way it is doing this is to create the impression through its domain name that it is operating under the imprimatur or, as the Policy puts it, “the sponsorship, affiliation or endorsement” of the Complainant. The Panel has already explained how this is so by reference to the meaning of domain name itself, the content and presentation of the website and the inadequacy of the purported disclaimers. The Respondent could always have used its own domain name, <fasterthanthem.com> and a corresponding website and then announced on the website that it sold Borla parts, a business that would have been lawful and one to which the Complainant says it has no objection.
Instead of doing that, it has attracted potential customers by using and promoting the Complainant’s BORLA trademark without consent and against the express wishes of the Complainant and by creating the impression in the minds of potential customers that it has the endorsement of the Complainant. Indeed, it has gone into business in competition with the Complainant, using the Complainant’s own name and trademark and even promoting rival brands. This conduct brings the matter squarely within the provisions of sub-paragraph 4(b)(iv) and applies both to the registration and the use of the domain name.
This view, that the conduct just
described amounts to bad faith, is consistent with the view taken by other UDRP
panels on analogous facts and particularly in cases where the names of
well-known motorcar manufacturers have been used to sell spare parts made by
them and by other manufacturers. Thus,
in Toyota Motor
Sales, U.S.A., Inc. v. Pick Pro Parts Inc, D2005-0562 (WIPO
July 20, 2005), the owner of the domain name <lexus--parts.com>, an
unauthorized dealer in Lexus parts, was directing the domain name to its
website <pickproparts.com>, where Lexus parts could be bought, but
alongside parts for other brands. On the
issue of bad faith that inevitably arose for decision, the Panel said:
The
Respondent confusingly employs the Complainant’s marks in the Domain Names to
attract Internet users to the Respondent’s commercial site, where the
Respondent attempts to sell Complainant’s parts, as well as those of its
competitors, evidently for commercial gain. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. See
Those
observations are equally applicable to the present case and show that, within
the meaning of paragraph 4(b)(iv), there has been both
bad faith registration and use.
The
decisions cited by the Complainant, Southern
Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb Forum, July 18, 2000)
and Computerized Security Systems,
Inc. v. Bennie Hu, FA 157321 (Nat. Arb. Forum, June 23, 2003) are to the same effect.
The Complainant has therefore proved both that
the domain name was registered in bad faith and that it is being used in bad
faith and has therefore made out the third of the
three elements that it must establish.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <borladirect.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: June 20, 2007
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