WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Boy Scouts of America v. Private Whois Escrow Domains Private Limited, Pluto Domain Services Private Ltd., Laksh Internet Solutions Private Limited and Comdot Internet Services Pvt. Ltd. Case No. D2008-1816 1. The Parties
The Complainant is Boy Scouts of America of Texas, United States of America (“USA” or “US”), represented by The Gigalaw Firm, USA.
The Respondents are Private Whois Escrow Domains Private Limited, Pluto Domain Services Private Ltd, Laksh Internet Solutions Private Limited and Comdot Internet Services Pvt. Ltd, all of Mumbai, India. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Lead Networks Domains Pvt. Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 25, 2008, and in hard copy on December 2, 2008.
The Center transmitted its request for registrar verification to the Registrar on November 25, 2008. The Registrar responded (following reminders) on December 3, 2008, stating that it had not received a copy of the Complaint, that it was the Registrar of the Domain Names, that the Respondent was not the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Names had been or were in the process of being placed on Registrar lock and that the registration agreement was in English. The Registrar also provided the full contact details on its Whois database in respect of the Domain Names and the expiry dates of the registrations. The Registrar did not dispute that the registration agreement contained a mutual jurisdiction clause as required by ICANN.
The Center informed the Complainant that the names of the registrants of the Domain Names stated by the Registrar differed from that indicated in the Complaint and invited the Complainant to submit an amendment to the Complaint. The Complainant submitted an Amendment to the Complaint by email on December 9, 2008, and in hard copy on December 12, 2008.
The Center verified that the Complaint together with the Amendment to the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 11, 2008. The notification was correctly sent by the Center to the Respondents' email addresses recorded on the Registrar's database. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 31, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on January 5, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 22, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint together with the Amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant was incorporated in 1910 and chartered by the US Congress in 1916. It is the sole entity recognised by the international scouting movement to implement the Boy Scouting program in the USA.
The Complainant provides an educational program for boys and young adults to build character instill the responsibilities of citizenship and develop personal fitness. Its mission is to prepare young people to make ethical and moral choices over their lifetimes according to the values of the Scout Oath and Scout Law.
112 million people have participated in the Complainant's programs since 1910. At the end of 2007 the Complainant had over 120,000 units, over 2.8 million youth members and over 1.1 million adult members.
The Complainant obtains funds from registration fees, local council service fees, investment income, its magazines “Boys' Life” and “Scouting”, sale of uniforms and equipment, and contributions from individuals.
The Complainant has registered CUB SCOUTS, BOY SCOUTS OF AMERICA and various other phrases containing the words BOY SCOUTS OF AMERICA as trademarks in the USA.
As at the date of the Complaint, the Domain Names were directed to web pages which displayed links inter alia to websites apparently of third parties competing with the Complainant.
At the date of the Complaint, the Domain Names were all registered in the name of the first Respondent. However, by the date of the Registrar's verification, the Domains were registered in the names of the second, third and fourth Respondents. 5. Parties' Contentions A. Complainant
The Complainant contends that it has rights in the marks CUB SCOUTS and BOY SCOUTS OF AMERICA and that the Domain Names are confusingly similar to these marks. In connection with the Domain Name , it points out that “OC” would stand for “Orange County”, a district of California, USA.
The Complainant submits that the Respondents do not have rights or legitimate interests in respect of the Domain Names. It contends that the Respondents' use of the Domain Names for web pages which merely contain links to websites of third parties, including competitors of the Complainant, does not constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the UDRP. The Complainant points out that the Respondents are not commonly known by the Domain Names. The Complainant further alleges that the Respondents are not making legitimate non-commercial or fair use of the Domain Names, since they are using them misleadingly to divert consumers and to obtain commercial gain through sponsored links.
The Complainant contends that the Respondents registered and are using the Domain Names in bad faith. According to the Complainant, paragraph 4(b)(iv) of the Policy applies, since the Respondents are using the Domain Names intentionally to attract Internet users to their websites for commercial gain by creating a likelihood of confusion with its marks as to the source, sponsorship, affiliation or endorsement of their websites or products or services on them.
The Complainant also alleges that the Respondents registered the Domain Names to prevent the Complainant reflecting its marks in corresponding domain names. The Complainant submits that the Respondents' failure to reply to its communications is further evidence of bad faith.
The Complainant alleges that the first Respondent's purported transfer of the Domain Names to the second, third and fourth Respondents is merely an attempt to evade the UDRP process, and notes that numerous complaints under the UDRP against these entities have been upheld.
The Complainant asks the Panel to proceed against all of the Respondents as if each is an alias of the same person and to order that all three Domain Names be transferred to the Complainant. If the Panel declines to proceed against all of the Respondents, the Complainant asks the Panel to proceed against the registrant of , to order that this Domain Name be transferred to it, and to permit it to proceed separately in relation to the other Domain Names. B. Respondents
As stated above, the Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. Applicable Provisions
In accordance with paragraph 3(c) of the Rules, a complaint may relate to more than one domain name registered by the same domain-name holder.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondents' default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. B. The Respondents
The Panel notes that the three Domain Names were registered in the name of the first Respondent at the date of the Complaint and that the Respondents have not disputed the Complainant's allegation that the Domain Names were transferred to the second, third and fourth Respondents following the Complaint in order to evade the UDRP process. In these circumstances, the Panel finds that the Complaint relates to domain names registered by the same domain-name holder in accordance with paragraph 3(c) of the Rules. C. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the marks CUB SCOUTS and BOY SCOUTS OF AMERICA.
The Panel considers that each of the Domain Names is confusingly similar to one or other or both of these marks. The Domain Name is identical to the mark BOY SCOUTS OF AMERICA apart from the addition of the generic top level domain suffix and the omission of the letter “s” at the end of “scouts”. Internet users who omit this “s” by mistake are liable to be confused.
The Domain Name is identical to the mark CUB SCOUTS apart from the addition of a hyphen between the words “cub” and “scouts” and the generic top level domain suffix. It is common to replace a space between words by a hyphen in domain names, a space being an inadmissible character in domain names. Internet users are therefore likely to assume that this Domain Name is a domain name of the Complainant.
The Domain Name consists of the more distinctive part of both marks, by which members of the Complainant's organisation are commonly known, preceded by the letters “oc” and followed by the generic top level domain suffix. The letters “OC” have been widely used as an abbreviation for Orange County in California, including in the title of a popular television series. The Panel finds on the undisputed evidence that Internet users are likely to assume that this Domain Name refers to a branch of the Complainant in Orange County.
The first requirement of the Policy is satisfied. D. Rights or Legitimate Interests
The Panel does not regard the Respondents' use of the Domain Names for web pages containing sponsored links to third party websites as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. No real service is provided by the Respondents' web pages and, in any case, as discussed below, the Panel finds that the Respondents are not acting in good faith.
The Panel further finds on the undisputed evidence that the Respondents are not commonly known by the Domain Names and that they are not making legitimate non-commercial or fair use of the Domain Names.
In the circumstances, there does not appear to be any basis on which the Respondents could claim to have rights or legitimate interests in respect of the Domain Names.
The second requirement of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence that the Respondents are using the Domain Names intentionally to attract Internet users to their websites for commercial gain in the form of commissions from the sponsored links provided on them by creating a likelihood of confusion with the Complainant's marks. Internet users are liable to access the Respondents' websites in the expectation that they are websites of the Complainant and then to be diverted by the sponsored links to websites of third parties, including competitors of the Complainant. This constitutes evidence of registration and use of the Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the UDRP.
This presumption is corroborated in the present case by the transfer of the Domain Names to the second, third and fourth Respondents following the Complaint. The Panel finds on the undisputed evidence that this was done in an attempt to evade the UDRP process. As well as providing further evidence of bad faith, the registrations of the Domain Names in the names of the second, third and fourth Respondents were themselves registrations in bad faith.
The presumption and evidence indicated above are not contradicted by any countervailing evidence. The Panel concludes that the Domain Names were registered and are being used in bad faith. The third requirement of the UDRP is satisfied. 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 names, , and , be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: February 2, 2009
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