WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Butterfield & Robinson Management Services Inc. v. Whois Protection Service LLC Case No. D2009-0651 1. The Parties
Complainant is Butterfield & Robinson Management Services Inc. of Toronto, Ontario, Canada, represented by Mark Woolgar, Canada.
Respondent is Whois Protection Service LLC, General Delivery, Georgetown, Grand Cayman, Overseas territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2009. On May 15, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the Domain Name. On May 18, 2009, CSL Computer Service Langenbach GmbH dba J transmitted by email to the Center its verification response. In the response, CSL confirmed that Respondent had registered the Domain Name, provided Respondent's contact details, and informed the Center that it was freezing the Domain Name until further notice.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on June 25, 2009.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 3, 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 Background
Complainant, Butterfield & Robinson Management Services, Inc., has operated a high-end leisure travel and tour business under the name Butterfield & Robinson since 1966. Its core business includes biking and walking tours of Europe and Southeast Asia, cruising, and customized active tours for adults and families throughout the world. The Complainant's customers come from around the world and largely from the United States.
The Complainant is the owner of the following Canadian and United States registered trademarks:
Mark
Country of Registration
Registration Number
(Reg. Date)
Associated goods and services
BUTTERFIELD & ROBINSON
Canada
TMA488314 (Jan. 27, 1998)
Goods: Biking and hiking equipment and accessories. Services: Tour and travel services and retail sale of related accessories.
BUTTERFIELD & ROBINSON
USA
2080553
(July 22, 1997)
Services: travel booking and tour guide services
B & R
Canada
TMA502301 (Oct. 11, 1998)
Goods: Biking and hiking equipment and accessories. Services: Tour and travel services and retail sale of related accessories.
B & R
USA
3059758
(Feb. 21, 2006)
Goods: Biking accessories. Services: Tour guide and travel booking services; retail and mail order sale of related accessories.
The Complainant is the applicant of the following trademark registration application:
Mark
Country of Registration
Application Number
Associated goods and services
BUTTERFIELD
Canada
1371598
Goods: Stationary, clothing, luggage, and travel accessories.
Services: Web site offering travel information and booking services and offering advertisements for others by way of a web site.
Complainant operates its own web site at URL “”, where its trademark BUTTERFIELD & ROBINSON is prominently displayed on the top left corner of each page.
Respondent appears to have registered the Domain Name on January 19, 2007.
Respondent did not file a response in these proceedings and was notified of its default by the Center on June 25, 2009. 5. Parties' Contentions A. Complainant
Complainant contends that:
(a) in accordance with Policy, paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii), (b)(ix)(1), the Domain Name is identical or confusingly similar to a trademark it owns;
(b) in accordance with Policy, paragraph 4(a)(ii) and Rules, paragraph (3)(b)(ix)(2), Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) in accordance with Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3), Respondent registered and used the Domain Name in bad faith.
Complainant contends that the Domain Name merely substitutes the word “and” for the ampersand symbol in its BUTTERFIELD & ROBINSON trademark, and is therefore almost identical and confusingly similar to its registered mark.
Complainant contends that its Internet presence constitutes an important part of its marketing activities. Through its own web site, Complainant markets its travel services and related goods. Complainant prominently displays its trademark on the top corner of each page of its web site.
Complainant asserts that Respondent is not related to Complainant in any way.
Complainant states that the Domain Name directs Internet users to travel e-commerce sites, which offer vacation tours and other travel services marketed by parties unrelated to Complainant. In particular, Respondent's site diverts users to the web sites listed below, many of which offer services and goods that directly compete with those of Complainant. None of these competing web sites make any use of Complainant's registered marks.
“”
“”
“”
“”
“www.VacationB”
“”
“/ studenttours”
“”
“www.TrekE”
Complainant argues that Respondent intentionally chose the Domain Name to illegally and improperly confuse and divert potential customers seeking information about Complainant and its services to web sites where competing services were offered for sale.
Complainant asserts that there is no evidence that Respondent uses or has prepared to use the Domain Name or any corresponding name in connection with a bona fide offering of goods and services.
Complainant contends that there is no evidence that Respondent is commonly known by the Domain Name. Respondent does not identify itself or any other entity using the Domain Name, but rather appears to employ the Domain Name solely to divert internet traffic to competing e-commerce sites.
Complainant also contends that Respondent is not using the Domain Name for a legitimate, non-commercial or fair use. Rather, Respondent's sole use of the Domain Name is for commercial gain by misleading consumers.
Complainant argues that Respondent relies on the name “Butterfield and Robinson” to pass off its goods and services as those of Complainant, and thereby deliberately confuses potential customers. Complainant further argues that by intentionally attracting Internet users, for commercial gain, to its site, and thereafter diverting those users to web sites unrelated to Complainant, Respondent creates a likelihood of confusion with Complainant's trademarks.
Complainant also contends that the deliberate use of a trademark constitutes intentional interference with Complainant's financial interests, which are actionable wrongs for which Complainant would be able to recover damages in Canadian courts.
Complainant argues that since Respondent, Whois Protection Service LLC, registered the Domain Name, such registration implies that Respondent is aware of, and is intentionally breaching, Complainant's trademark and other legal rights, with the clear intent of deriving profit from such breaches.
Finally Complainant states that Respondent's actions recited herein have caused material damage to Complainant's business and reputation, and Respondent's continued use of the Domain Name will cause further such damage.
In accordance with paragraph 4(i) of the Policy, Complainant requested the appointment of a single-member administrative panel, and that such panel transfer to Complainant the domain name. B. Respondent
Respondent has not replied to Complainant's contentions. 6. Discussion and Findings Procedural Matters
Default of Respondent: Respondent has not provided an answer to the Complaint. Respondent's failure to deny Complainant's allegations and proffer evidence in rebuttal of such allegations, does, in accordance with the Rules, paragraphs 5(e) and 14, permit the Panel to draw appropriate inferences. Nonetheless, Complainant retains the burden of proving the three requisite elements of Policy, paragraph 4(a). Substantive Matters
Paragraph 4 of the Policy requires that Complainant proves each of the following elements in order for the Domain Name to be transferred:
a) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
b) Respondent has no rights or legitimate interests in respect of the Domain Name;
c) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant asserts that it is the owner of the trademark BUTTERFIELD & ROBINSON, and that Respondent's Domain Name is identical or confusingly similar to that trademark.
The Panel finds that Complainant is the owner of rights in the trademark BUTTERFIELD & ROBINSON and uses the trademark in Canada and the United States in connection with the scope of goods and services granted. The trademark registration creates a rebuttable presumption that Complainant's marks are inherently distinctive. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
The Panel finds that the Domain Name is essentially identical and at least confusingly similar to Complainant's BUTTERFIELD & ROBINSON trademark. Respondent has merely 1) substituted the word “and” for the trademark's ampersand symbol (&), 2) used all lower-case letters, 3) omitted spaces, and 4) added a “.com” suffix to the end of the mark. The Panel finds that these actions are insufficient to distinguish the Domain Name from Complainant's trademark.
The substitution of the word “and” for an ampersand symbol in a trademark or service mark has been found in numerous decisions not to distinguish the domain name from the mark. See, e.g., AT&T Corp. v. ATandT.net,WIPO Case No. D2005-1006; AT&T Corp. v. ATandT.com,WIPO Case No. D2002-1178; Chadbourne & Parke LLC v. American Distribution Systems, Inc. d/b/a DefaultD and Brian Wick,WIPO Case No. D2003-0553. In those decisions, the panels found that the “absence of the ampersand in domain names is dictated by the fact that . . . domain names are expected to exclude that character . . . [or] to be replaced with an equivalent [such as “and”] . . .” AT&T Corp. v. ATandT.com,WIPO Case No. D2002-1178.
The use of the “.com” suffix in the Domain Name is likewise a necessary by-product of URL structure, and is therefore entitled to no weight. In PepsiCo., Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696, the panel found that the addition of generic top-level domains (gTLDs), such as ".com", to an otherwise protected mark was not legally significant. See also Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300 (finding that the use of a gTLD was without legal significance since registrants were required to use them and they did not “serve to identify a specific service provider as a source of goods or services”).
The omission of spaces between words of a trademark is also of no significance in determining whether a domain name is identical or confusingly similar to a trademark. See Red Bull GmbH v. Emory Virgil,WIPO Case No. D2005-0381 (citing Tarjeta Naranja S.A. v. MrD and Alejandro San Jorge,WIPO Case No. D2001-0295). Likewise, the use of lower case letters instead of the lettering of the trademark is a difference of no legal significance. Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503 (citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999)).
For the foregoing reasons, the Panel finds that Complainant has satisfied the burden of this first requirement of Policy, paragraph 4. As Respondent has failed to reply with evidence to the contrary, the Panel finds that the disputed domain name is identical and confusingly similar to Complainant's BUTTERFIELD & ROBINSON trademark. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name.
Complainant must show, according to the Policy, paragraph 4(c), that Respondent does not use the Domain Name or any corresponding name in connection with a bona fide offering of goods or services; is not commonly known by the Domain Name; and is not making a legitimate non-commercial or fair use of the Domain Name.
In support, Complainant asserts that it has no connection or relation to Respondent. Furthermore, there is no evidence that Respondent has ever been known by the Domain Name or any other corresponding name.
Respondent uses the Domain Name to provide links to other web sites, which offer travel goods and services that compete directly with Complainant's goods and services. Therefore, Respondent's site acts as a referral service. AT&T Corp. v. ATandT.net, supra. That Respondent is using Complainant's mark to attract Internet users bound for Complainant's site “cannot be the basis for a bona fide offering of goods or services,” regardless of whether Respondent receives commissions for such referrals. Id. In doing so, Respondent is taking advantage of Complainant's reputation and good will to attract internet users and then divert them to Complainant's competitors. Id.
In light of the foregoing evidence, the Panel finds that Complainant has satisfied its burden under the second requirement of Policy, paragraph 4. Since Respondent has failed to answer with evidence to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may be used to demonstrate bad faith. Paragraph 4(b)(iv) of the Policy provides that bad faith can be found where Respondent registered and used a domain name to intentionally attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's web site, or the product or service on its web site.
The Panel finds that the registration and use of the Domain Name by Respondent intentionally diverted Internet users away from Complainant's site and towards competitor sites. The Panel finds that it did so by exploiting the confusing similarity between the Domain Name and Complainant's BUTTERFIELD & ROBINSON trademark.
Reasonable and un-rebutted inferences suggest that Respondent did the above-mentioned activities in order to gain financially, and that it did indeed profit from diverting traffic away from Complainant's site and towards those of Complainant's competitors. FHG Holdings Pty LTD d/b/a Click Business Cards v. Jim Smith,WIPO Case No. D2006-0670; AT&T Corp. v. ATandT.net, supra.
In Weetabix Limited v. Mr. J. Clarke,WIPO Case No. D2001-0775, the Panel found that bad faith was established where “Respondent ‘knew or should have known' of the registration and use of the trademark prior to registering the domain name.”, citing SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport, NAF Claim No. FA0094956. Likewise Marriott International, Inc. v. John Marriot, NAF Claim No. FA0094737; 163972 Canada Inc. v. Sandro Ursino, DeC Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. E, NAF Claim No. FA0095037. Complainant's trademark is properly protected by United States and Canadian registrations and is clearly employed, in keeping with its registered uses, on Complainant's own web site. Moreover, Respondent's web site diverts users to other sites that compete directly with Complainant's goods and services. The Panel thus finds that Respondent must have been aware not only of the Butterfield & Robinson name, but also of the goods and services related to it.
Weetabix Limited and other panel decisions also concluded that the registration of false contact details can be sufficient alone to establish bad faith. The record reflects evidence of unsuccessful courier delivery attempts at Respondent's Grand Cayman address, which was on file with the registrar as Respondent's main and administration address. The Panel, without any evidence to the contrary, finds that where Respondent provided false or incorrect contact details to the registrar at the time of registration of the Domain Name, Respondent was acting in bad faith.
In light of the foregoing evidence, the Panel finds that Complainant has satisfied its burden of showing that Respondent registered and used the Domain Name in bad faith. 7. Decision
For all the foregoing reasons, and in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel finds that Complainant has established that:
a) the Domain Name registered by Respondent is identical or confusingly similar to Complainant's registered BUTTERFIELD & ROBINSON trademark;
b) Respondent has no rights or legitimate interests with respect to the Domain Name;
c) Respondent registered and used the Domain Name in bad faith.
Accordingly, the Panel orders that the domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: July 20, 2009
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