The Complainant is Hacker Boat Company, Inc., United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Domain Admin, Trademark Protection, the Cayman Islands, the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 4, 2019. 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 a United States corporation, the world’s largest builder of classic mahogany motorboats. The Complainant was founded by John L. Hacker in 1908, who began using in 1916 the HACKER-CRAFT trademark, applied in a stylized format to each boat manufactured. Hacker-Craft was named as one of “America’s Top 50 Products” by Forbes Magazine, and Hacker-Craft boats have been featured in advertising campaigns for many of the world’s premier brands such as Tommy Hilfiger, Nautica, Marks & Spencer and Tommy Bahama.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the words HACKER-CRAFT or HACKERCRAFT in various jurisdictions throughout the world, including the following:
- the United States Trademark for HACKERCRAFT (stylised), with registration number 1732866, registered on November 17, 1992;
- the United States Trademark for HACKERCRAFT, with registration number 5017054, registered on August 9, 2016;
The disputed domain name was registered on February 14, 2010. According to the unrebutted evidence put forward by the Complainant, the disputed domain name resolved at the date of the Complaint to a website with advertising links for various products in competition with and related to Hacker-Craft products. At the date of this decision the disputed domain name redirects to another website offering house related products or services. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical and confusingly similar to the Complainant’s trademarks, as the disputed domain name consists only of the Complainant’s HACKERCRAFT trademark in its entirety and differs from the Complainant’s HACKER-CRAFT trademark only by the removal of the hyphen.
With regard to the second element, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant argues that the Respondent has never been commonly known by the disputed domain name and that the Respondent has not acquired any trademark or service trademark rights in connection with the disputed domain name. The Complainant shows it has no relationship with the Respondent, and that the Complainant has not given the Respondent permission or authorization to use the Complainant’s trademarks in any way.
The Complainant further argues that the Respondent has not used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services and has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website filled with what appear to be advertising links for various products in competition with and related to Hacker-Craft products. The Complainant also shows that the website at the disputed domain name displays the term HACKER, showing that the Respondent is aware of the Complainant’s trademarks and the type of products offered thereunder.
With regard to the third element, the Complainant argues that the Respondent registered the disputed domain name decades after the Complainant established its trademark rights and global fame, with the bad faith intention of profiting off of the Complainant’s notoriety as a brand for classic wooden boats. The Complainant argues that the Respondent registered and subsequently used the disputed domain name in bad faith to create confusion and attract Internet users seeking the Complainant and the Complainant’s products to the Respondent’s advertisement laden website that presumably earns the Respondent a pay-per-click sum. Further, according to the Complainant, the Respondent’s decision to withhold any viable contact information from the Domain WhoIs record, in tandem with the other bad faith factors, should be considered evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the HACKERCRAFT trademark.
Here the disputed domain name is identical to the Complainant’s HACKERCRAFT trademark. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark HACKERCRAFT and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the Respondent was using the disputed domain name to host a parked page comprising PPC links to competing goods. According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this case, the PPC links are related to the Complainant’s trademark HACKERCRAFT and generate search results with competing goods to those offered by the Complainant. In this Panel’s view, such use does not confer rights or legitimate interests to the Respondent. For a similar finding, see F5 Networks, Inc. v. Domain Administrator, c/o Whois Watchdog,WIPO Case No. D2016-0043.
Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, or the name “hackercraft”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark HACKERCRAFT in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its HACKERCRAFT trademark is widely used in commerce well before the registration of the disputed domain name. The website associated the disputed domain name contained links related to the good offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark HACKERCRAFT. See MasterCard International Incorporated v. Capital Conservator Group LLC,WIPO Case No. D2009-1051.
The fact that the disputed domain name is identical to the Complainant’s trademarks indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. As held in a similar case, “[t]he disputed domain name differs from the Complainant’s trademark only in the selection of the Top-Level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion” (Guinness World Records Limited v. Solution Studio,WIPO Case No. D2016-0186).
As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name identical to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of Owner, c/o / Tulip Trading Company,WIPO Case No. D2018-1135.
Further, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the disputed domain name redirected at the date of the Complaint Internet traffic to a website displaying pay-per-click advertisements for Complainant related services. Given the identity between the HACKERCRAFT trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of HACKERCRAFT services. See Compagnie Générale des Etablissements Michelin v. PrivacyP and Kim Bum LLC,WIPO Case No. D2013‑0181.
In addition, another indication of bad faith is in this Panel view the apparent change of the content of the website after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. pxlchk1@,WIPO Case No. D2006-1373.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. 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 disputed domain name be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Date: October 18, 2019
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