WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Boy Scouts of America v. NameInvest Ltd. Case No. D2008-1423 1. The Parties
The Complainant is Boy Scouts of America, of Irving, Texas, United States of America, represented by The Gigalaw Firm LLC, United States of America.
The Respondent is NameInvest Ltd., of Anguilla, Overseas Territory of the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2008. On September 19, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On September 23, 2008, eNom, Inc. 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 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2008.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on October 31, 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 following facts are not contested:
The Complainant, incorporated on February 8, 1910, and chartered by the U.S. Congress in 1916, is the sole entity recognized by the international Scouting movement (World Organization of the Scouting Movement) to implement the Boy Scouting program in the United States of America and its territories.
The Complainant owns several federal trademark registrations in the United States of America that consist of or include the mark BOY SCOUTS, (e.g., BOY SCOUTS OF AMERICA: No. 1,725,084, registered on October 20, 1992, No. 1,363,872, registered on October 1, 1985, and No. 1,215,939, registered on November 9, 1982; SCOUT SHOP BOY SCOUTS OF AMERICA: No. 1,316,207, registered on January 22, 1985; BOY SCOUTS OF AMERICA BE PREPARED: No. 1,245,661, registered on July 12, 1983; ORDER OF THE ARROW BOY SCOUTS OF AMERICA: No. 1,230,012, registered on March 8, 1983, and No. 2,314,084, registered on February 1, 2000; CATHOLIC COMMITTEE BOY SCOUTS OF AMERICA: No. 2,356,801, registered on June 13, 2000; BASIC LEADER TRAINING BOY SCOUTS OF AMERICA: No. 2,657,094, registered on December 3, 2002; and HIAWATHA SEAWAY COUNCIL ADIRONDACK SCOUT CAMPS BOY SCOUTS OF AMERICA: No. 2,808,615, registered on January 27, 2004).
The BOY SCOUT trademark has been used since 1910 in connection with the International Scouting Movement (World Organization of the Scouting Movement).
On September 21, 2001, the Respondent registered the disputed domain name .
The disputed domain name is linked to the website “www.” which provides general links to various third-party services competitive with the services offered by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
The Complainant, incorporated on February 8, 1910, and chartered by the U.S. Congress in 1916, is the sole entity recognized by the international Scouting movement (World Organization of the Scouting Movement) to implement the Boy Scouting program in the United States of America and its territories.
The Complainant owns several federal trademark registrations in the United States of America that consist of or include the mark BOY SCOUTS, (e.g., BOY SCOUTS OF AMERICA: No. 1,725,084, registered on October 20, 1992, No. 1,363,872, registered on October 1, 1985, and No. 1,215,939, registered on November 9, 1982; SCOUT SHOP BOY SCOUTS OF AMERICA: No. 1,316,207, registered on January 22, 1985; BOY SCOUTS OF AMERICA BE PREPARED: No. 1,245,661, registered on July 12, 1983; ORDER OF THE ARROW BOY SCOUTS OF AMERICA: No. 1,230,012, registered on March 8, 1983, and No. 2,314,084, registered on February 1, 2000; CATHOLIC COMMITTEE BOY SCOUTS OF AMERICA: No. 2,356,801, registered on June 13, 2000; BASIC LEADER TRAINING BOY SCOUTS OF AMERICA: No. 2,657,094, registered on December 3, 2002; and HIAWATHA SEAWAY COUNCIL ADIRONDACK SCOUT CAMPS BOY SCOUTS OF AMERICA: No. 2,808,615, registered on January 27, 2004), herein after referred to as the BOY SCOUTS trademarks.
The Complainant is the registrant of more than 550 domain names, many of which include the term “Boy Scouts”, including the domain name , which was registered on April 1, 1998.
The Respondent registered the disputed domain name on September 21, 2001.
The disputed domain name is confusingly similar to the BOY SCOUTS trademarks. The relevant comparison to be made is with the second-level portion of the disputed domain name.
The only difference between the Complainant's trademark and the disputed domain name is the absence of the letter “s” from the end of the word “scout” in the disputed domain name, and the absence of the words “of America”.
Neither the absence of the letter “s” nor the words “of America” from the disputed domain name does anything to alleviate the confusing similarity between the Complainant's trademarks and the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant's marks.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the BOY SCOUT trademarks in any manner.
The Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is using the disputed domain name in connection with a portal site that provides general links to various third-party services competitive with the services offered by the Complainant. Such use is not a bona fide offering of goods or services under the Policy.
The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. In addition, given the Complainant's use of the BOY SCOUTS trademarks for 98 years, is unlikely that the Respondent is or was commonly known by this name.
The Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, with intent for commercial gain misleadingly to divert consumers.
The disputed domain has been registered and is being used in bad faith.
The Respondent is using the disputed domain name in connection with a portal site that provides general links to various third-party services competitive with the services offered by the Complainant, which constitutes bad faith as set forth in paragraph 4(b)(iv) of the Policy.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the BOY SCOUTS trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
The Respondent's behavior suggests “opportunistic bad faith”.
Moreover, the Respondent has acted in bad faith because it registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct.
In that connection, the Respondent has registered numerous other domain names that are identical or confusingly similar to well-known trademarks owned by third parties. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant owns several federal trademark registrations in the United States of America that consist of or include the term “Boy Scouts”, particularly BOY SCOUTS OF AMERICA, No. 1,725,084, registered on October 20, 1992 (first use in commerce in 1940), No. 1,363,872, registered on October 1, 1985 (first use in commerce in 1910), and No. 1,215,939, registered on November 9, 1982 (first use in commerce in 1911).
The disputed domain name is not identical to the Complainant's trademarks. However, this Panel considers that BOY SCOUTS is the main and distinguishing element in the registered trademark BOY SCOUTS OF AMERICA.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the complainant must prove is that the respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative (i.e. that a respondent has no rights or legitimate interests in respect of a domain name). It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and therefore has not made such showing.
Furthermore, the Complainant has submitted relevant evidence showing that the Respondent is attracting for commercial gain, Internet users to its website and to the websites of Complainant's competitors. Such use cannot be considered a bona fide use, or fair or non-commercial use, but rather an unfair use of the disputed domain name.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “Boy Scout”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, as required in paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.
The Policy in its paragraph 4(b) sets out various circumstances that may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant owns federal registrations for the trademark BOY SCOUTS OF AMERICA, as well as other trademarks including the term “Boy Scouts”, which are widely known in the United States of America and worldwide, and which were first registered in 1982 and used at least as early as 1910, significantly pre-dating the Respondent's registration of the disputed domain name on September 21, 2001.
Moreover, the Complainant operates the website “www.” (corresponding to the domain name , registered on April 1, 1998), which is almost identical to the disputed domain name.
Therefore, the Panel finds that the Respondent in all likelihood was aware of the trademark BOY SCOUTS OF AMERICA before registering the disputed domain name, which evidences its bad faith registration.
Moreover, it has been proved that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement.
This is evidenced by the fact that the Respondent's website “www.” has sponsored links1 that transfer visitors to other on-line locations, which offer services which are competing or strongly related to the ones offered by the Complainant.
Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.
For these reasons, the Panel finds that the Respondent both registered and is using the domain name in bad faith, and that the Complainant has therefore made out the third element of its case. 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.
Miguel B. O'Farrell
Sole Panelist
Dated: November 14, 2008
1 In fact, the links are listed as “Sponsored Results for: (…)”.
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