WIPO Domain Name Decision: D2004-0785

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert J. Goodman, Box Brothers Corporation v. Gary Lam

Case No. D2004-0785

1. The Parties

The Complainant is Robert J. Goodman, Box Brothers Corporation, Woodland Hills, California, United States of America, represented by Mark S. Frydman, United States of America.

The Respondent is Gary Lam, Central, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed Domain Name <boxbrothers.com> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2004. On September 29, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On September 29, 2004, eNom transmitted by email to the Center its verification response confirming that the Domain Name is in “locked status” and providing a link to the WHOIS report. The WHOIS report confirmed that the Respondent is listed as the registrant, and provided the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2004.

The Center appointed Warwick Smith as the sole panelist in this matter on November 9, 2004. 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.

With the copies of the record transmitted to the Panel by the Center, the Panel received a copy of a page from the website to which the Domain Name resolves. That page did not form part of the complaint – it had been downloaded by the Center in the course of its normal check for addresses to which notification of the complaint might be sent to the Respondent. As the Panel had seen the web page, and it included material which appeared to be relevant to the complaint, the Panel directed that the Respondent should have a further opportunity to submit a response, including a response to the material on the website. On November 18, 2004, the Panel requested the Respondent to file a statement in response to the Complaint, including “any evidence or submissions the Respondent may wish to make on the contents of the website to which the Domain Name resolves.”

That statement in response was requested by November 25, 2004, and the time for the Panel to give this decision was extended to December 2, 2004. No statement in response has been received.

In the absence of any Response, the Panel has considered whether the Center has discharged its responsibility to forward the Complaint to the Respondent (paragraph 2(a) of the Rules). The Panel is satisfied that it has. The Complaint was transmitted to the appropriate email addresses, and was sent by registered post to the PO Box address listed in the WHOIS report for the Domain Name. Attempts were also made to send the Complaint by facsimile to the number supplied in the WHOIS report. There has been no indication that the transmission of the Complaint to the email addresses and to the post office address given in the WHOIS report was unsuccessful. Overall, the Panel is satisfied that the Center has discharged its responsibility “to employ reasonably available means calculated to achieve actual notice [of the Complaint] to the Respondent” (paragraph 2(a) of the Rules).

4. Factual Background

The Complainant

According to the Complainant, Mr. Goodwin, Box Brothers Corporation has been trading under the name “Box Brothers” since 1985. Box Brothers is in the business of selling cardboard boxes and packaging materials, as well as providing shipping services to small businesses and to the general public. It is stated in the Complaint that Box Brothers Corporation has retail stores and shipping warehouses in several different markets in the United States. Mr. Goodwin does not supply information as to the nature of his role at Box Brothers Corporation, but from the information below, it would appear that Mr. Goodwin has been associated with the company since its inception.

The Complainant’s Trademark

The Complainant has provided evidence of a United States service mark “BOX BROTHERS” (Registration number 2295586 – “the service mark”), by way of an electronic United States Patent and Trademark Office (USPTO) search report (Annex 3 to the complaint). According to that report, the service mark was registered to Mr. Goodman at the same address as that given in the Complaint for Box Brothers Corporation, with effect from July 23, 1998. “BOX BROTHERS” is registered for “Retail and wholesale distributorships featuring cardboard boxes”.

The Respondent

The Respondent registered the Domain Name on August 9, 2003. No evidence, beyond the allegations outlined below, was supplied in the Complaint about the kinds of activities carried on by the Respondent at the website to which the Domain Name resolves. No evidence was provided of any contact between the Complainant and the Respondent.

5. Parties’ Contentions

A. Complainant

1. The Domain Name is identical to the service mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name:

(i) The Respondent does not have any relationship to the name “Box Brothers”, and is not, as far as the Complainant is aware, known by the name “Box Brothers”.

(ii) The Respondent is using the “Box Brothers” name on the website to which the Domain Name resolves, to sell similar products and services to Box Brothers Corporation, such as shipping services, transportation services and the sale of boxes.

(iii) The Respondent is using the Domain Name to direct Internet traffic to the websites of competitors of Box Brothers Corporation.

3. The Domain Name was registered and is being used in bad faith:

(i) The Respondent registered the Domain Name and has used the service mark “for the direct and sole purpose of misleading customers to his choice of our competitors,” and for his own pecuniary gain.

(ii) The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the service mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the 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 Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, 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 location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the Panel to:

“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

Paragraph 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By Paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of the Rules, or failing to comply with any request from the Panel.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proved this part of the Complaint. The Complainant is the registered proprietor of the service mark, and the service mark is identical to the Domain Name (apart from the generic “.com”).

The Policy does not require that a complainant’s trademark be recognised by the respondent’s country of incorporation or residence. As the Panel in Funskool (India) Ltd v. funschool.com Corporation, WIPO Case No. D2000-0796 noted, had this been the intention of the Policy, it would have stated so expressly. Thus, at this stage of the enquiry, the fact that the Complainant has a United States-registered trademark and the Respondent is situated in Hong Kong does not prevent a finding for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy requires that a complainant must prove each of the elements in paragraph 4(a), and it might be thought that proving a negative (that the respondent does not enjoy some right or legitimate interest in the domain at issue) could pose particular difficulties for complainants. But the wording of paragraph 4(c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest (see for example Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074. The Panel agrees with that general approach.

In this case, the Complainant has not licensed or otherwise permitted the Respondent to use the service mark, or to register or use any domain name which incorporates the service mark. The Domain Name is identical to the service mark. In the absence of any response, that is sufficient proof of the matters required to be proved under paragraph 4 (a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is at this stage of the enquiry that the paucity of evidence provided by the Complainant poses difficulties. As mentioned above, the effect of paragraphs 5(e) and 15(a) of the Rules is that the Panel must come to a decision on the basis of the documents before it, which, in a default situation, comprise the Complaint and its supporting evidence. In Servizi Interbancari S.p.A. v. Andrea Picaro, WIPO Case No. D2001-0881, the Panel explained the effect of the Rules in a default situation in these terms:

“…where due process has been followed (i.e. in terms of service of the complaint and other procedural requirements), an undefended complaint should succeed if the statements in it and the documents filed as evidence even minimally make out a case under the ICANN Policy and Rules. This is how the rules are written. However, complainants do not prevail merely by default under the ICANN Policy and Rules. There must be some evidence to support all of the three main elements to be proven.”

The Complainant’s main difficulty in proving bad faith registration, is that while the Complainant has established its business in the United States, the Respondent appears to be located in Hong Kong. There is no proof that the Complainant has ever traded outside the United States, and no direct evidence that the Respondent knew of the Complainant (or should have known of the Complainant) before he registered the Domain Name.

The Complainant’s allegations that the Respondent has been using the website to which the Domain Name resolves to supply goods and services similar to those of the Complainant, and to divert internet traffic to websites of the Complainant’s competitors, were not substantiated by any supporting evidence.

However a printout of a page from the website to which the Domain Name resolves was included among the documents forwarded from the Center to show compliance with the notification requirements of the Rules. While it is not for the Panel to argue a party’s case for it, the Panel did review this document in the course of confirming that the Center had completed its obligations under paragraph 2(a) of the Rules, and the Panel is entitled to call for further evidence if it sees fit to do so (Rule 12 of the Rules). Subject to allowing the Respondent a further opportunity to submit a response (including an opportunity to provide evidence or submissions directed to the webpage), the Panel is of the view that it is entitled to take the webpage into account in assessing whether the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

The printout of the website was taken by the Center on October 1, 2004. It features the heading “boxbrothers.com”, under which is written “The top BOXES resources on the net”. The website appears to function as a search engine, whereby customers can find information on boxes and packaging supplies by clicking on one of the categories supplied. These include “Boxes”, “Packaging Supply”, “Moving”, “Shipping” and “Packaging”. The website appears to be commercial in nature, so it is probable that the Respondent receives some sort of commission for each referral he directs from this website.

The Panel is entitled to look at the totality of the evidence to assess whether, in all the circumstances of the case, bad faith has been proven. The Respondent registered the domain Name on August 9, 2003, fifteen years after the Complainant first used the service mark in commerce (August 1988 according to the search record from the USPTO), and just over five years after the service mark was registered with the USPTO. The Respondent’s website is in the English language, and it appears to offer consumers information on businesses engaged in activities very similar to those undertaken by Box Brothers Corporation. One of the information categories a visitor to the Respondent’s website can click on is “International Shipping,” so it appears that the Respondent’s activities are intended for an international market, and were not intended to be limited to Hong Kong.

The words “Box Brothers”, while partially incorporating a descriptor of the sort of business in which the Complainant is involved, are not in combination an obvious name for a packaging retailer or a shipping service, let alone an internet portal site offering connections to websites covering matters as diverse as education and health (as well as packaging and shipping). Having regard to the content of the webpage, and in the absence of any response from the Respondent, it seems to the Panel to be too much of a coincidence for the Respondent to have registered a domain name identical to the service mark (with the intention of creating a website offering goods and services similar to those offered by the Complainant), without the Respondent being aware of the service mark and of the Complainant’s business. If the Respondent was aware of the Complainant or the service mark, it is difficult to avoid the conclusion that the Respondent’s intention must have been to capitalize on the Complainant’s goodwill in the service mark.

Although the Complainant’s case was marginal and barely documented, there is just enough evidence to create a case for the Respondent to answer. The Respondent has elected not to provide any answer, and in those circumstances the Rules and the Policy permit the Panel to infer that the Respondent does not have any answer to the Complaint.

The use of a domain name identical to the Complainant’s service mark as the address of a website offering services which are very similar to those of the Complainant, is likely to have created confusion in the minds of some internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In the absence of any response, the Panel infers that the Respondent created that confusion with the intention of attracting Internet users to the Respondent’s website, and that he did so for “commercial gain” (the Respondent’s website clearly being commercial in nature). That is sufficient to establish bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel therefore finds this part of the Complaint proved.

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, <boxbrothers.com>, be transferred to the Complainant.

Warwick Smith
Sole Panelist

Dated: November 30, 2004