The Complainant is Hacker Boat Company, Inc. of New York, United States of America, represented by Day Pitney LLP, United States of America (the “U.S.”).
The Respondent is Whois Watchdog of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On July 28, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 28, 2011, 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 of the Respondent.
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 the Respondent of the Complaint, and the proceedings commenced on August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2011.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on August 31, 2011. 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.
The language of the registration agreement applicable to the disputed domain name is English. Therefore, according to the Rules, paragraph 11(a), the language of the proceedings is English. 4. Factual Background
The Complainant, a company founded in 1908 by John L. Hacker, is a builder of high-end wooden motorboats commercialized under the trademark HACKER-CRAFT.
The Complainant owns a U.S. trademark registration for the mark HACKERCRAFT (word in stylized form) in class 12 (Reg. No. 1,732,866 of November 17, 1992).
The Complainant also contends to have the exclusive right to use the word mark HACKERCRAFT registered in class 12 in the U.S. in the name of Morgan Marine Base, Inc. of Silver Bay, New York (Reg. No. 1,517,895 of December 27, 1988).
The disputed domain name was registered on February 14, 2010.
At the time of filing of the Complaint, the disputed domain name was resolving to a web site featuring sponsored links. The content of such links was related to boats including wooden boats. 5. Parties’ Contentions A. Complainant
The disputed domain name contains the mark HACKERCRAFT in its entirety and is thus confusingly similar to the marks of Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent does not own any trademark or service mark registrations encompassing the disputed domain name, is not known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Indeed, as the Respondent advertises boat products under the disputed domain name, it is unconceivable that the Respondent did not have actual knowledge of Complainant’s long-standing rights in the valuable Hacker Boat. The Respondent’s registration and use of the disputed domain name is an intentional attempt to divert Internet users for commercial gain and disrupt Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of a U.S. registration for the mark HACKERCRAFT (word in stylized form). It also contends to have the exclusive right to use the word mark HACKERCRAFT registered in the name of Morgan Marine Base, Inc. The Complainant does not provide details or submit evidence to support this contention. However, as the attorney of record in the registration for the word mark HACKERCRAFT is the same law firm that represents the Complainant in the present administrative proceedings, and as the Respondent did not file any response contesting the Complainant’s exclusive right to use the word mark HACKERCRAFT, the Panel is prepared to consider this statement as true for the purpose of the present administrative proceedings.
The disputed domain name is strictly identical to the word mark HACKERCRAFT. It is furthermore highly similar to the mark HACKERCRAFT (word in stylized form) insofar as elements of style cannot possibly be reproduced in a domain name, and as, in the case at hand, the style elements of the registration at issue are not especially prominent compared to the distinctive textual element HACKERCRAFT. Confusion between the mark HACKERCRAFT (word in stylized form) and the disputed domain name may therefore be considered a likely.
The disputed domain name is accordingly identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.
The Complainant has provided evidence showing that the Respondent has used the disputed domain name in connection with a website featuring sponsored links. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is not evidence of any rights or legitimate interests (see Woolworths Limited v. Domain AdminkPrivacyP/Smvs Consultancy Privacy Limited,WIPO Case No. D2010-1046; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776; Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695).
Furthermore, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent as no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The term “hackercraft” is not a dictionary word, and the combination of the English words “hacker” and “craft” does not appear usual or obvious in this Panel’s view. It seems thus likely that the Respondent had knowledge of the Complainant’s mark when it registered the disputed domain name.
Furthermore, the Respondent has used the disputed domain name in connection with a website consisting essentially of sponsored links that relate to boats, including wooden boats, whereas the Complainant has been building and commercializing wooden boats for many years. This shows, in the Panel’s opinion, an intention on the part of Respondent to exploit and profit from the Complainant’s mark.
Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee,WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776; AllianceBernstein LP v. Texas International Property Associates,WIPO Case No. D2008-1230).
For all the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Anne-Virginie La Spada-Gaide
Sole Panelist
Dated: September 14, 2011
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