WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Boy Scouts of America v. Salvador Preckler Arias Case No. D2008-1367 1. The Parties
The Complainant is Boy Scouts of America of the United States of America, represented by The Gigalaw Firm of the United States of America.
The Respondent is Salvador Preckler Arias, of Santa Cruz de Tenerife, Spain. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2008. On September 9, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 9, 2008, the Registrar 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 September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 17, 2008. 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 the American arm of the international Scouting movement. It was incorporated on February 8, 1910, and chartered by the U.S. Congress in 1916. It is the sole entity recognized by the international Scouting movement (World Organization of the Scouting Movement) to implement the Boy Scouting programme in the United States of America and its territories.
The Complainant is the owner of at least 10 federal trademark registrations in the United States of America that consist of or include the words “Boy Scouts”, including inter alia United States trade mark registration no. 1215939 dated November 9, 1982, BOY SCOUTS OF AMERICA (typed drawing), and claiming first use in 1911. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its registered trade mark, BOY SCOUTS OF AMERICA, and to the abbreviated, unregistered version of that mark, BOY SCOUTS.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant further contends that the Domain Name was registered and is being used in bad faith within the meaning of sub-paragraphs 4(b)(ii) and 4(b)(iv) of the Policy. B. Respondent
The Respondent has not replied to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant has produced to the Panel evidence of its registered United States trade mark rights to the mark, BOY SCOUTS OF AMERICA. It has also produced substantial evidence sufficient to support a claim to unregistered rights in the United States of America in respect of the abbreviated form, BOY SCOUTS. None of that evidence has been challenged by the Respondent.
The Panel is satisfied that the Complainant has unregistered trade mark rights in the United States of America in respect of the mark, BOY SCOUTS, in addition to its registered trade mark rights in the longer form mark.
The Domain Name comprises the word, “boyscout”, and the generic domain suffix, . It is well established that the generic domain suffix may be ignored when assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy. Insofar as the registered mark is concerned, the Panel does not regard the absence of the plural form and the geographical limitation, “of America”, as being of sufficient significance to render the Domain Name unconfusing and insofar as the unregistered mark is concerned the confusing similarity is obvious.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has registered and unregistered rights. C. Rights or Legitimate Interests
The Complainant recites the four examples of what shall constitute rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy as set out in paragraph 4(c) of the Policy. The Complainant contends that none of those examples is applicable in this case.
The Complainant demonstrates that the Respondent is using the Domain Name to connect to a portal site featuring sponsored links to various sites, some of which are to sites offering services competing with those of the Complainant. It also features links to sites offering goods and services having no connection with the Complainant's field of activity. The Complainant contends that the Respondent's website, through which the Respondent will be earning pay-per-click revenue, is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent is not known by reference to the Domain Name, the Complainant has not authorized the Respondent to use of the Domain Name and the Complainant contends that there is nothing fair or legitimate about the Respondent's use of the Domain Name, which is calculated to attract Internet users to his site, who will be visiting the site in the mistaken belief that the site is a site of or authorized by the Complainant.
The Panel is satisfied that the Complainant has made out a prima facie case under this head of the Policy and that the Respondent has a case to answer. The Respondent has chosen not to answer.
In the absence of a response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name both for the purpose of preventing the Complainant from registering the Domain Name (paragraph 4(b)(ii) of the Policy) and for the purpose of attracting Internet users to his website by deceit for commercial gain (paragraph 4(b)(iv) of the Policy).
While, for the purpose of paragraph 4(b)(ii) of the Policy, the Complainant has adduced evidence to show that the Respondent has in the past been found to be in possession of domain names featuring the trade marks of third parties (e.g. and ), the Panel very much doubts that the Respondent registered the Domain Name with a view to blocking the Complainant. That will inevitably have been the result of registration of the Domain Name by the Respondent, but the Panel cannot think of any reason why that result should have been uppermost in the Respondent's mind when registering the Domain Name and the Complainant does not put forward any reason why that should be so.
As to paragraph 4(b)(iv) of the Policy, the Complainant contends that the Domain Name is a clear reference to a participant in one of the educational programs run by the members of the World Organization of the Scouting Movement, of which the Complainant is the American arm. The Complainant contends that visitors to the Respondent's website will have been attracted to that site by the Domain Name, believing that a website connected to the Domain Name will be a website of or authorized by the Complainant. The Respondent's site is a commercial website in that it will be generating pay-per-click revenue from visitors clicking on the advertising links featured on the website. Thus, the Respondent is using the Domain Name, intentionally attempting to attract Internet users to his website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of his website within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant's contentions in relation to paragraph 4(b)(iv) of the Policy are persuasive, certainly as regards the United States of America. The Panel is satisfied that a not insignificant proportion of Internet users in the United States of America will be likely to visit the Respondent's website believing it to be a website of or authorized by the Complainant and that it was the intention of the Respondent, when he registered the Domain Name, to attract Internet users by that means and for commercial gain. However, one concern to the Panel has been that while those contentions may be true of Internet users in the United States of America, in other parts of the world Internet users thus deceived will have been expecting to visit a site of or authorized by their local arm of the World Organization of Scouting Movement, not the Complainant.
Is that a reason for not making a finding under paragraph 4(b)(iv) of the Policy? While the Panel believes it quite likely that the Respondent's intentions may not have been focused on any particular arm of the World Organization of Scouting Movement, the Panel is satisfied that the Respondent's intentions were directed at the Boy Scout movement at large, of which the Complainant is a substantial part, and that the Respondent will have hoped for commercial revenue generated by Internet visitors to his website from all parts of the world, including the United States of America.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 7. Decision
The consequence of the above findings is that the Complaint succeeds, in which case the normal direction is a direction that the Domain Name be transferred to the Complainant. Does it matter that the Complainant is only one of a number of entities around the world entitled to use the relevant trade marks? The Panel does not believe so. What is clear is that the Respondent has no entitlement to the Domain Name and the interests of justice will best be served by removing the Domain Name from the Respondent and putting it into the care of an entity which does have such an entitlement, namely the Complainant, which has proved to the satisfaction of the Panel that each of the elements of paragraph 4(a) of the Policy is present.
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.
Tony Willoughby
Sole Panelist
Dated: October 31, 2008
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