WIPO Domain Name Decision D2007-1130 for nutzandboltz.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nutz & Boltz, Inc. v. Whois Protection

Case No. D2007-1130

 

1. The Parties

The Complainant is Nutz & Boltz, Inc. of Butler, Maryland, United States of America, represented by Venable, LLP, of Washington D.C., United States of America.

The Respondent is Whois Protection of West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name (the “Disputed Domain Name”) is registered with R Services Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On August 8, 2007, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2007.

The Center appointed Jacques de Werra as the sole panelist in this matter on September 10, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a Maryland corporation which provides automobile related consumer information and operates a website under the domain name . This website redirects visitors to another website at the domain name which is also operated by the Complainant.

David Solomon, who owns and is doing business as the Complainant, Nutz & Boltz Inc., is the registered owner of US trademark “NUTZ AND BOLTZ” (Reg. No. 2,147,860) for goods and services in classes 16 and 41 (hereafter: the “Trademark”). The Trademark was registered on March 31, 1998 and claims a first use as from 1988.

The Complainant operated the Disputed Domain Name from 1997 to 2006, until which time the registration was discontinued (based on an alleged miscommunication of the previous registrar of the Disputed Domain Name for which no evidence has been brought by the Complainant).

The new registration of the Disputed Domain Name occurred on October 13, 2006. The Complainant contacted the new holders of the Disputed Domain Name in order to inform them about its prior registration of the Disputed Domain Name, but did not reacquire the Disputed Domain Name.

The website which is operated by the Respondent at the Disputed Domain Name consists of a collection of links pointing to various types of products and services among which automobile related commercial services (i.e., car insurance and car warranty services) in what appears to be a pay per click revenue scheme.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Disputed Domain Name is likely to be confused with the Trademark which is well known within the realm of automobile related consumer information. The Complainant also claims that the Disputed Domain Name is identical to the other domain name which it operates at “www.”. The Complainant also contends that it has owned the registration of the Disputed Domain Name since 1997 until it was snatched away by the Respondent due to a miscommunication committed by the previous registrar of the Disputed Domain Name. At that time when the Disputed Domain Name was operated by the Complainant, it had an average of 20,000 visitors each month. The use of the Disputed Domain Name made by the Respondent creates confusion among consumers who are lead to believe that the Complainant endorses the sites which are listed on the Disputed Domain Name by the Respondent.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no rights to any trademark consisting of the terms “NUTZ AND BOLTZ” in any country and because the Respondent has never been licensed or otherwise permitted by the Complainant to use the Trademark. The Complainant further contends that the Respondent is using the Disputed Domain Name with the intent to mislead and divert consumers for commercial gain and to disrupt the Complainant’s business. The Complainant also contends that the use of the Disputed Domain Name as a web portal offering sponsored links to third party websites related to, among other things, information about car insurance and car warranties does not create a legitimate interest of the Respondent in the Disputed Domain Name.

Regarding the condition of registration and use in bad faith of the Disputed Domain Name, the Complainant finally contends that the Respondent registered the Disputed Domain Name with actual knowledge that the Complainant held rights in and to the Trademark given that the Respondent uses the Disputed Domain Name in order to link to US-based car insurance and car warranty providers (the United States of America being the country in which the Complainant is based). Respondent’s bad faith is also demonstrated by the fact that the Respondent acquired and operates the Disputed Domain Name for the purpose of monetary gain by providing links to third party contents in a “click-through” advertising scheme and by the fact that the Respondent is a cyber-pirate which would have been involved in other domain name disputes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

The Panel notes that the Complainant is not the registered owner of the Trademark, but that the Trademark is owned by David Solomon. However, given that, based on the uncontradicted evidence filed by the Complainant, David Solomon owns and is doing business as the Complainant, the Panel finds that the Complainant has established its rights in the Trademark, by virtue of its right to use the Trademark granted by the Trademark’s owner. See, DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939 (holding that it is “sufficient if the Complainant has what the law recognises as ‘rights’ in the trademark, even if such rights fall short of actual ownership. Such a right will often arise from a license granted by the legal owner of the trademark to another party so that the latter may use the mark.”) and Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756 (holding that the complainant, through its affiliation to its grandparent corporation which owned a trademark registration, had rights in the relevant trademark).

The Panel finds that the Disputed Domain Name is identical to the Trademark given that it simply replicates the Trademark in its entirety.

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

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.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy 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. See, Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.

In this case, the Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name hosts a website providing links to various goods and services in what appears to be a “click-through” site. The website at the Disputed Domain Name is indeed used for the purpose of listing what are ostensibly sponsored advertising links pointing to third party commercial websites, whereby some of these links refer to services which are closely related to the Complainant’s automobile related consumer information services.

The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name (it being noted that the Respondent uses a privacy shield for the Disputed Domain Name).

On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name. The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.

C. Registered and Used in Bad Faith

Based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name for the purposes of monetary gain by providing links to commercial sites at the website with the Disputed Domain Name which are unrelated to the ones of the Complainant, whereby some of these links refer to car related services (i.e., car warranty and car insurance services); services which are closely related to the Complainant’s automobile related consumer information services.

On this basis, the Panel is convinced that the Respondent is trading on the goodwill of the Complainant’s Trademark, and is diverting Internet traffic intended for the Complainant’s website for its own commercial interest, it being noted that the Complainant itself used the Disputed Domain Name until 2006 until it lost its registration (for a reason which remains unclear to the Panel but which is not relevant for deciding this case). This type of use of the Disputed Domain Name constitutes evidence of the bad faith of the Respondent under Paragraph 4(b)(iv) of the Policy. See, Charlotte Russe Holding, Inc. v. Whois ID Theft Protection,WIPO Case No. D2007-0371; WeddingC, Inc. v. Helois Lab, WIPO Case No. D2006-0021; L’Oreal, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; and, Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

 

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.

Jacques de Werra
Sole Panelist

Dated: September 24, 2007

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