WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spencer Douglass, MGA v. Bail Yes Bonding
Case No. D2004-0261
1. The Parties
The Complainant is Spencer Douglass, MGA, Rancho Santa Fe, California, United States of America, represented by The Trademark Group, APLC, United States of America.
The Respondent is Bail Yes Bonding, Joe Mastrapa, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2004. On April 8, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 13, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Rules 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2004. In accordance with the Rule 5(a), the due date for Response was May 13, 2004. On May 13, 2004, the Respondent communicated with the Center by email, advising that the Respondent had agreed to transfer the disputed domain name to the Complainant. The Center then communicated by email with the Parties on May 14, 2004, suggesting that the administrative proceeding could be suspended while the Parties completed the transfer process. On May 18, 2004, the Center by email requested the Complainant to advise regarding the preferred course of action, to which the Complainant responded, indicating a preference for continuing with the administrative proceeding. Responding to the position of the Respondent in its May 13, 2004 statement, the Complainant indicated that it had twice sent transfer agreements to the Respondent prior to the commencement of the administrative proceedings, to no avail. After receiving this communication, the Center on May 19, 2004, issued notification of the Respondent's default on May 19, 2004.
The Center appointed William R. Towns as the Sole Panelist in this matter on May 27, 2004. 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.
After receiving notification from the Center of the appointment of the Panel on May 27, 2004, the Respondent provided a further email communication to the Center on May 27, 2004, addressed to the Panel, which included several earlier email communications between the Respondent and the Complainant's representative regarding the disputed domain name. The Center forwarded a copy of the Respondent's May 27, 2004 email communication to the Panel for its consideration on May 28, 2004.
The language of the proceeding is English.
4. Factual Background
The Complainant and the Respondent are both in the business of providing bail bonding services. The Complainant does business in California and Idaho as ALADDIN BAIL BONDS, which the Complainant also asserts is a common law service mark continuously used by the Complainant since March 1, 1996. In addition, the Complainant has registered the service marks ALADDIN and ALADDIN (stylized) with the United States Patent and Trademark Office (USPTO). The Complainant filed applications for federal trademark registrations on September 26, 2000, and the marks were registered on the principle registry of the USPTO on October 2, 2001. The Complainant also registered the domain name on November 23, 1998. The domain name resolves to the Aladdin Bail Bonds website.
The Respondent has been in the bail bonding business for more than 25 years, and according to its website, provides nationwide bonding services under the name BAIL YES. The Respondent's web site indicates that it provides bail bonding services in California. On July 26, 2003, the Respondent registered the disputed domain name through Go Daddy Software, Inc. The disputed domain name resolves to the Respondent's website, where as noted above, the Respondent offers bonding services in California, in competition with the bail bonding services of the Complainant.
The Complainant's representative forwarded a letter to the Respondent by certified mail on September 16, 2003, which was received by the Respondent on September 19, 2003. That letter informed the Respondent of the Complainant's registration of the ALADDIN mark, and alleged that Respondent's use of the ALADDIN mark, including its incorporation in the disputed domain name, infringed the Complainant's federal and common law trademark rights and constituted unfair competition and false advertising under state law. Demand was made that the Respondent within 15 days cease and desist use of the Complainant's mark or any similar term, and assign the disputed domain name to the Complainant. The Respondent was instructed to go to the Go Daddy Software website and to follow the instructions there in order to transfer the domain name.
The Complainant's representative dispatched a second letter to the Respondent by certified mail on November 7, 2003, and received by the Respondent on November 10, 2003, stating that no response had been received to the prior September 16, 2003 letter, and indicating that a formal WIPO proceeding would be initiated unless the Respondent confirmed on or before November 19 that it had ceased all use of the term ALADDIN and had transferred the disputed domain name as outlined in the September 16, 2003.
As of the commencement of the administrative proceeding in this matter, the Respondent had not transferred the disputed domain name to the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant contends that it has continually provided bail bonding services under the common law service mark ALADDIN BAIL BONDS, and the federally registered service marks ALADDIN and ALADDIN (stylized) since March 1, 1996. As noted above, ALADDIN and ALADDIN (stylized) were registered on the principal register of the USPTO on October 2, 2001. The Complainant registered the domain name on November 28, 1998, which resolves to a website at that address concerning the Complainant's bail bonding services. On this basis, the Complainant asserts rights in the marks ALADDIN BAIL BONDS, ALADDIN and ALADDIN (stylized).
The Complainant contends that the Respondent's domain name is identical or confusingly similar to the Complainant's marks. First, the Complainant asserts that the disputed domain name incorporates the Complainant's federally registered ALADDIN mark in its entirety. Further, the Complainant notes that the disputed domain name differs from the Complainant's ALADDIN BAIL BONDS mark and domain name only because the word "bonds" has been replaced with the word "bonding" (emphasis added). The Complainant argues that the addition of "Bail Bonding" to its ALADDIN mark is more likely to increase confusion, since the additional words describe the Complainant's services.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain because the Complainant has not licensed or otherwise authorized the Respondent to use the ALADDIN marks. Further, the Complainant asserts that the Respondent had constructive notice of the Complainant's federally registered marks under 15 U.S.C. § 1072, and that the Respondent never used the disputed domain name in connection with any bona fide offer of goods or services prior to the Complainant's registration and use of its marks. The Complainant further contends that the Respondent has never been known by the name "Aladdin," that the Respondent's adoption of that name subsequent to the Complainant's filing and registration of its marks constitutes trademark infringement, and that the Respondent is using the disputed domain name in an attempt to mislead consumers and divert them away from Complainant's services.
Finally, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent failed to respond to two written requests on September 16 and November 7, 2003, for the transfer of the disputed domain name. The Complainant further contends that the Respondent failed to conduct a trademark search prior to registering the domain name. The Complainant also alleges that the Respondent registered the disputed domain name to trade on the Complainant's ALADDIN marks, to disrupt the Complainant's business, and to attract internet users to Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, and endorsement of the Respondent's website and Respondent's bail bonding services. The Complainant seeks to have the disputed domain name transferred to it.
B. Respondent
The Respondent did not submit a response to the Complainant's contentions meeting the requirements described in Rule 5(b) and in the Supplemental Rules. However, as noted above, on May 13, 2004, within the time provided in the Rules for such a response, the Respondent did communicate with the Center by email. In addition to advising the Center of its agreement to transfer the disputed domain name, the Respondent stated "it certainly is not our intention to steal anyone's domain or web business." The Respondent further indicated in its May 13, 2004 communication that it had conducted a trademark search for "Aladdin Bail Bonding" before registering the disputed domain name.
The Respondent provided a further statement regarding the Complainant's contentions by email on May 27, 2004, which the Center has forwarded to the Panel for further consideration. This communication essentially provided further information to support Respondent's position that it was attempting to resolve the dispute through a voluntary transfer of the domain name to the Complainant. In this supplemental submission, the Respondent denies that it was provided with any formal transfer agreement by the Complainant prior to the commencement of the administrative proceeding.
6. Discussion and Findings
A. Scope of the Policy and Rules
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names," also known as "cybersquatting." Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).
Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Since Paragraph 4(a)(iii) requires the Complainant to prove that the domain name has been registered and is being used in bad faith, a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing under Paragraph 4(a)(iii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. In this instance, the Panel must determine whether to consider the Respondent's email submissions of May 13 and 27, 2004, in reaching a decision in this case. As noted above, the Respondent's May 13, 2004 email communication, was submitted within the time provided in the Rule 5(a) for a response, but did not meet the requirements for a response under Rule 5(b). The Panel infers from the Center's notification of the Respondent's default that the Center did not consider the Respondent's email communication to be an effective response under the Rules. The Respondent's subsequent email communication of May 27, 2004, clearly was not timely under Rule 5(a), and can be considered only, if at all, as a further statement of the Respondent under Rule 12.
Rule 5(e) instructs that if a Respondent does not submit a response, in the absence of exceptional circumstances the Panel shall decide the dispute based upon the complaint. Given that the Respondent's email communication of May 13, 2004, did not comply with the requirements of Rule 5(b), the Center's notification of the Respondent's default was appropriate under the Rules. Nevertheless, the Panel's consideration of this question cannot end there, as Rule 10(b) requires the Panel to conduct the administrative proceeding in a manner that ensures the Parties are treated equally and that each Party is given a fair opportunity to present its case.
The Respondent's email communication of May 13, 2004, although intended principally to advise of the Respondent's efforts to resolve the dispute, does attempt to address some of the Complainant's contentions. It is a fair reading of the Respondent's May 13, 2004 statement that it attempts to rebut the Complainant's charge that the Respondent registered the disputed domain name without first conducting any trademark search. Further, the Respondent in so many words avers that it did not intend to divert any web business through the use of the disputed domain name, or to prevent the Complainant from using its own mark in a corresponding domain name ("it certainly is not our intention to steal anyone's domain or web business").
Accordingly, the Panel believes that consideration of the Respondent's May 13, 2004 communication, to the extent it responds to the Complainant's contentions, will best serve the purposes of Rule 10(b), which obligates this Panel to ensure that each Party is given a fair opportunity to present its case. However, the Panel notes that the Respondent's failure to comply with the requirements of Rule 5(b), and in particular the Respondent's failure to provide the statement required by Rule 5(b)(viii), is not merely a technical omission, but one that bears on the reliability of the information submitted by the Respondent. And under Rule 10(d), the determination of the admissibility, relevance, materiality and weight of the evidence is the province of this Panel.
Regarding the Respondent's further submission of May 27, 2004, Rule 12 provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. Nevertheless, the Policy and the Rules collectively demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. The Panel also favors single submissions by the parties, but recognizes that extraordinary circumstances may exist where a supplemental submission of a party, even if not requested by the Panel, offers new evidence that is demonstrably material to the Panel's decision, and which reasonably could not have been furnished in the Party's initial submission. Applying this standard, the Panel has determined that it will not consider that Respondent's supplemental submission of May 27, 2004, in reaching a decision in this case. The Respondent's supplemental submission is essentially cumulative of the Respondent's May 13, 2004 response. For similar reasons, the Panel will not consider the Complainant's email communication of May 18, 2004, to the extent it is a reply to Respondent's May 13, 2004 communication, in reaching a decision in this case.
B. Identical or Confusingly Similar
The Panel concludes that the Respondent's domain name is confusingly similar to the Complainant's ALADDIN marks for purposes of Paragraph 4(a)(i) of the Policy. The Complainant has established rights in the ALADDIN and ALADDIN (stylized) marks, which are registered with the United States Patent and Trademark Office and thus are entitled to a presumption of validity. See EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047. Previous panels have held that, if a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Glaxo Group Limited v. Michale Kelly, WIPO Case No. D2004-0262; Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant's mark). In this case the addition of the words "bail bonding," which describe both the Complainant's and the Respondent's services, may well serve only to increase the likelihood of confusion. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainant's ALADDIN mark.
C. Rights or Legitimate Interests
The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the ALADDIN marks in connection with the conduct of the Respondent's business or as part of Respondent's domain name. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Glaxo Group Limited v. Michale Kelly, D2004-0262; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Further, the Respondent's registration of a domain name incorporating the registered service mark of a competitor, coupled with the Respondent's use of the disputed domain name to direct consumers to its website, is evidence of the Respondent's use of the domain name to misleadingly divert consumers away from the Complainant's business, and constitutes a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See The Vanguard Group v. Dotsan, WIPO Case No. D2002-0585; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110.
Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Regarding Paragraph 4(c)(i), the Respondent's use of a domain name incorporating the entire mark of a competitor to point to the Respondent's website does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, (finding no legitimate interest in use of CHANEL mark as part of domain name leading to web site selling various types of perfume). Rather, the Panel concludes that the Respondent sought to trade on the good will of the Complainant's ALADDIN mark by incorporating the entirety of the mark into the disputed domain name. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests "opportunistic bad faith."
Regarding Paragraph 4(c)(ii), the Respondent offers no evidence that it has been commonly known by the disputed domain name. To the contrary, the evidence of record indicates that Respondent has been in the bail bonding business as and known by Bail Yes Bonding for some 25 years. Moreover, Paragraph 4(c)(ii) requires evidence that the Respondent had rights prior to and not merely following from the use of a domain name. Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. This is particularly so, where as here, the Respondent adopted someone else's mark, giving rise to a question whether the domain name was registered and is being used in good faith. See Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492. If anything, the Respondent's use of the disputed domain name seems calculated to falsely suggest to Internet users that the Complainant is affiliated with the Respondent's website. See, e.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211.
Nor has the Respondent demonstrated any legitimate noncommercial or fair use of the disputed domain name under Paragraph 4(c)(iii). Rather, the evidence strongly suggests that the Respondent has attempted to use the disputed domain name for commercial gain at the expense of the Complainant's business, by creating a likelihood of confusion with the Complainant's ALADDIN mark, and using the domain name as a hypertext link to misleadingly divert and attract consumers to its own website. See The Vanguard Group v. Dotsan, WIPO Case No. D2002-0585; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name for purposes of the Paragraphs 4(a)(ii) and 4(c) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the Respondent 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) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.
The circumstances of this case compel a finding of the registration and use of the disputed domain name in bad faith by the Respondent. The Complainant, a competitor of the Respondent, had continuously used ALADDIN as a service mark for seven years before the Respondent registered the disputed domain name, which incorporates the Complainant's mark in its entirety. The Respondent clearly had constructive, if not actual notice of Complainant's mark. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Respondent has established no rights or legitimate interests respecting the domain name, which is confusingly similar to the Complainant's mark, and the Respondent has used the domain name only to point to its website. In this context, the Respondent's claim that it acquired simply because it "liked the name" is totally unconvincing, and the Panel rejects this explanation as not being worthy of belief.
It is a clear inference from the circumstances that the Respondent's intent in registering and using the disputed domain name was to disrupt the business of one of its competitors, and to attract, for commercial gain, internet users to its website, 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. Respondent clearly has attempted to trade on the good will of the Complainant's mark. Whether or not the Respondent has now agreed to transfer the disputed domain name is of no moment. Nor does Respondent's claim that it conducted a trademark search for "Aladdin Bail Bonding" prior to registering the domain name, even if true, establish that it had no knowledge of the Complainant's rights in the ALADDIN mark.
Accordingly, the Panel finds from the circumstances that the Respondent registered and is using a domain name confusingly similar to the Complainant's mark, in an attempt to disrupt the Complainant's business and to attract, for commercial gain, internet users to Respondent's web site, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. Pursuant to Paragraph 4(b)(iii) & (iv), this constitutes evidence of bad faith registration and use of the disputed domain name for purposes of Paragraph 4(a)(iii). See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453; Bodegas Vega Sicilia, S.A. v. Serafín Rodrígues Rodrígues, WIPO Case No. D2001-1183; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; eBay Inc. v. Sunho Hong, WIPO Case D2000-1633; and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.1
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: June 1, 2004
1 Having reached this conclusion, the Panel has no occasion to consider whether, under the facts of this case, the Respondent's apparent failure to respond to the Complainant's requests for the transfer of the domain name is evidence of bad faith registration and use of the mark.
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