WIPO Domain Name Decision: D2009-0624 (function(w,d,s,l,i){w[l]=w[l]||[];w[l].push({'gtm.start':new Date.getTime,event:'gtm.js'});var f=d.getElementsByTagName(s)[0],j=d.createElement(s),dl=l!='dataLayer'?'&l='+l:'';j.async=true;j.src=''+i+dl;f.parentNode.insertBefore(j,f);})(window,document,'script','dataLayer','GTM-P7RLS2'); WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Defever Yachts International LLC v. Yachts West Case No. D2009-0624 1. The PartiesThe Complainant is Defever Yachts International LLC of Maryland, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.The Respondent is Yachts West of Mexico. 2. The Domain Name and RegistrarThe disputed domain name is registered with Tucows Inc. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2009. On May 11, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 11, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 15, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 5, 2009.The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 15, 2009. 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 BackgroundThe Complainant was founded by Arthur DeFever. In the 1940's, Defever designed tuna clippers for the commercial fishing fleets in San Pedro, California. After designing and producing boats for the United States (“U.S.”) Navy and U.S. Army throughout World War II, DeFever started his own architectural firm under the name DeFever Yachts International, LLC. The Complainant has been commissioned by both private industry and individuals from around the world to design vessels for a variety of purposes, ranging from luxury yachts to ferry boats. Between the years 1939 and 2009, DeFever has produced over 2000 original designs for boats ranging from 38' – 300'. The Complainant has since at least as early as 1962 used the DEFEVER trademark in association with the design, global promotion and sale of recreational power boats, pleasure yachts and commercial use watercraft.The Complainant owns a U.S. Trademark Registration for the mark DEFEVER (No. 1,736,394), which issued on December 1, 1992. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly SimilarThe Complainant contends that the domain name is confusingly similar to the Complainant's trademark DEFEVER, which is the subject of U.S. trademark registration No. 1,736,394.The Complainant contends that the domain name is essentially identical to the trademark DEFEVER, except for the addition of the descriptive and generic word “yachts”. Accordingly, the Complainant contends that the domain name is confusingly similar to the Complainant's trademark. (b) Rights or Legitimate InterestsThe Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the domain name. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register domain names incorporating its trademark. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain names, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed domain name in connection with the operation of a website that provides links to websites that sell products of the Complainant's competitors for purposes of monetary gain, through what is commonly known as a “click-through” site. (c) Registered and Used in Bad FaithThe Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent must have been aware of the Complainant's rights in the DEFEVER trademark; (ii) the Respondent is using confusingly similar domain name in connection with click-through sites for the purposes of monetary gain; (iii) the Respondent has been named in previous UDRP disputes and found to have registered confusingly similar domain names of trademark owners in bad faith; and (iv) the Respondent provided false contact information upon registration of the disputed domain name in order to conceal its identity. B. RespondentThe Respondent did not reply to the Complainant's contentions. 6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:(i) The domain name is identical or confusingly similar to the 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 domain name has been registered and is being used in bad faith. A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights in the trademark DEFEVER by virtue of its U.S. trademark registration No. 1,736,394.The Panel also finds that the domain name is confusingly similar to the Complainant's trademark DEFEVER. The domain name replicates the Complainant's trademark in its entirety, and the addition of the generic descriptive word “yachts” is not sufficient to distinguish the domain name from the Complainant's trademark. In fact, the Panel finds that the addition of the descriptive word “yachts” draws a stronger connection to the Complaint's trademark DEFEVER, because the trademark is registered and used in association with the design, promotion and sale of boats, including most notably yachts.Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate InterestsThe Panel finds no evidence that the Respondent ever had any right or legitimate interest in the domain name. The Respondent does not appear to have been commonly known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services. The Panel finds that the Respondent's domain name provides links to goods and services of the Complainant's competitors through what appears to be a click-through site. Prior panels have decided that the use of a confusingly similar domain name in connection with a click-through site does not serve to establish a bona fide offering of goods and services. (See The Evening S, Inc. v. Henry Chan,WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic,WIPO Case No. D2005-0356).The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use it's DEFEVER trademark.The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad FaithThe uncontested evidence shows that the Complainant's trademark DEFEVER is distinctive and has been known since at least 1962 in the U.S. and internationally. The Panel accepts that the mark is well-known and enjoys a reputation both in the U.S. and internationally, as a result of the Complainant's continuous and extensive use of the DEFEVER mark in connection with the design, promotion and sale of boats, including power boats, pleasure yachts and ferries for over 45 years. The trademark DEFEVER is a coined term, and has no common meaning in the English language. The Panel can find no reason to chose the name “Defever” and combine it with the descriptive word “yachts”, unless the Respondent was aware of the Complainant's DEFEVER trademark and products. The Panel is therefore prepared to infer that the Respondent had actual knowledge of the Complainant's trademark rights when it registered the domain name.The Panel is also prepared to find that the Respondent registered the domain name and is operating a website for the purposes of monetary gain by providing links to sites of other companies, which are direct competitors of the Complainant, in the form of a click-through site. Accordingly, the Panel is prepared to find that the Respondent is deliberately trading on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant's website to the Respondent's website. Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate click-through sites to competitors can be considered to be evidence of bad faith. (See CareerBuilder, LLC v. Names for Sale,WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765).For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 7. DecisionFor 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. Christopher J. Pibus Sole PanelistDated: June 29, 2009
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