WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eagle Imports, Inc. v. B c/o Moniker Privacy Services / Mustafa Yakin Case No. D2010-0701 1. The Parties
The Complainant is Eagle Imports, Inc. of Wanamassa, New Jersey, United States of America, represented by Roche Pia LLC, United States of America.
The Respondent is B c/o Moniker Privacy Services / Mustafa Yakin of Pompano Beach, Florida, United States and Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2010. On May 5, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On May 6, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 7, 2010. 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 2010.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 4, 2010. 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 an importer and distributor in the United States (“U.S.”) of Bersa firearms. It is the owner of the U.S. registered trade mark BERSA, Registration Number 1613731, registered on September 18, 1990 in International Class 13 (the “Trade Mark”).
The Domain Name was registered on February 11, 2000. 5. Parties' Contentions A. Complainant
1. The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant is the principal importer and distributor of Bersa firearms in the U.S. It states that it acquired all rights to the Trade Mark in February 1988.
Bersa firearms have been in production for more than half a century. Bersa is a prestigious manufacturer and its products are noted for quality, their price-performance relationship and their use of advanced technology.
The term “Bersa” has no common usage. The Trade Mark was a fanciful term derived from the founders' initials, is not an acronym and has no dictionary meaning. It is understood only to refer to the Complainant's products.
The Domain Name consists solely of the Trade Mark.
2. The Respondent has no rights or legitimate interest in the Domain Name.
The Respondent is using the Domain Name to resolve to a website at “www.b” in order to advertise and sell products that compete with those of the Complainant.
The Respondent has no affiliation with the Complainant. Its website includes purported links to the Complainant's products such as “Bersa Handguns”, however these are in fact links to competing products. None of the Respondent's advertisements link to the Complainant's legitimate website.
Archive records show that the Respondent initially registered the Domain Name for sale. The Respondent is now using it misleadingly to generate advertising revenue. Neither such use is in connection with a bona fide offering of goods or services.
3. The Domain Name was registered and is being used in bad faith.
The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of the Complainant. The Domain Name would be confusing to anyone looking for official Bersa products. Furthermore, because anyone finding the Respondent's website because they assumed it to be affiliated with Bersa may stay on that site and the Respondent is therefore able to take advantage of the Trade Mark. Furthermore, in practice the Respondent diverts Internet users searching for the Complainant's products to a site or sites offering competing products.
By virtue of the same conduct, the Respondent is intentionally seeking to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship affiliation or endorsement of the Respondent's website or products or services to be found there. The Respondent is offering competing products and the Complainant has no control over the origin or quality of those products.
The Respondent had constructive notice of the Trade Mark by reason of its registration and must also have had actual notice of it. By initially offering the name for sale and then using it to divert users away from the Complainant's own website, the Respondent has effectively appropriated the Complainant's Trade Mark for itself.
The Complainant seeks a transfer of the Domain Name accordingly. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of the Trade Mark. The Domain Name (ignoring the formal gTLD suffix) is identical to the Trade Mark. Accordingly the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds that the Trade Mark is distinctive of the Complainant and its goods and is not generic or descriptive. There is no evidence that the Complainant has ever licensed or permitted the Respondent to use the Trade Mark by way of the Domain Name or otherwise. Nor is there evidence that the Respondent has ever legitimately been known by the Domain Name or that it has used it in connection with a bona fide offering of goods or services. In particular, the Panel finds that the Respondent's use of the Domain Name for the purposes complained of the by the Complainant does not constitute bona fide use. The Respondent has not replied to the Complaint and the Panel can find no evidence in the submissions before it of any rights or legitimate interest of the Respondent in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The panel accepts the Complainant's contentions that the Respondent (i) has offered the Domain Name for sale; (ii) has used it to disrupt the business of the Complainant and (iii) has used the Domain Name intentionally to seek to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship affiliation or endorsement of the Respondent's website or products or services to be found there.
The Panel accepts the Complainant's evidence that the Respondent has used the Domain Name not only to attract Internet users who are likely to be looking for the Complainant's own website (initial interest confusion), but also to place links on its site that falsely suggest they connect to the Complainant's products when in fact they link to those of the Complainant's competitors.
In the circumstances, the Panel concludes that the Respondent registered and has used the Domain Name in bad faith both by disrupting the Complainant's business and by seeking to confuse Internet users for commercial gain as to the source or affiliation of the Respondent's own advertisements. 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.
Steven A. Maier
Sole Panelist
Dated: June 14, 2010
Full & Egal Universal Law Academy