The Complainant is Brunswick Family Boat Co. Inc. of Knoxville, Tennessee, United States of America (“United States”), represented by Norvell IP llc, United States.
The Respondent is Andrea Chorbadjian of São Paulo, Brazil, represented by Fernanda Teixeira de Carvalho Souza, Brazil.
The disputed domain name <baylinerbrasil.com> is registered with Nomer.com.br (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2013. On November 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2013, 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.
On November 27, 2013, the Center informed the Parties that the language of the registration agreement for the disputed domain name is Portuguese, and invited the Complainant to (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, (ii) to submit the Complaint translated into Portuguese; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On November 29, 2013, the Complainant submitted a request for English to be the language of the proceedings. The Respondent neither filed language submissions nor responded to the Complainant’s request.
In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed amended Complaints on December 11 and December 18, 2013.
The Center verified that the Complaint together with the amended Complaints 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 in bothe Portuguese and English, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Response was filed in English with the Center on January 8, 2014.
The Center appointed Nuno Cruz as the sole panelist in this matter on January 17, 2014. 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 Complainant is Brunswick Family Boat Co. Inc., a Delaware corporation, having its principal place of business in Knoxville, Tennessee, United States. The Complainant is part of Brunswick Corporation, which is a leading and world-class designer, manufacturer, and marketer of pleasure boats and other recreational products.
The Complainant’s core domain name is <bayliner.com> and it uses the domain name <bayliner.com.br> for its Brazilian operations. These domain names resolve to websites that provide information regarding BAYLINER boats, worldwide dealerships, boat services and warranties, and resources for owners of BAYLINER boats. The Complainant also owns many other domain names that include the BAYLINER mark. For example, the Complainant operates and controls the content at the website “www.baylinerapparel.com”, which offers for sale a variety of BAYLINER branded products and services, such as clothing, headwear, bags, etc.
The Complainant is the owner of the United States Trademark No. 907086 BAYLINER registered on February 2, 1971 to designate “boats”. The Complainant also owns the United States Trademark No. 1440680 BAYLINER registered on May 26, 1987 to designate “clothing, namely, pants, shorts, sweaters, shirts, jackets and caps”. The Complainant is also the owner of Brazilian Trademark No. 814466109 BAYLINER registered on September 3, 1996 to designate “boats”.
The Complainant also owns valid, copyrightable subject matter in the Complainant’s website,”www.bayliner.com”, such as images of BAYLINER boats. This subject matter is protected by U.S. copyright laws.
The Complainant provided evidence in support of the above.
The disputed domain name <baylinerbrasil.com> was registered on April 11, 2013 and resolves to a website where the Respondent offers support services for the importation of motorboats and yachts on a worldwide level, including to Brazil, and where the Respondent presents itself as a buyer and seller of boats.
The Respondent states that it is the director of the company J & R Imports Inc.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s famous registered trademark BAYLINER. The disputed domain name combines the terms “bayliner” and “Brasil.”. The term “Brasil” simply refers to a geographic territory and the addition of a geographically descriptive term “Brasil” does not prevent the disputed domain name from being confusingly similar to Complainant’s BAYLINER trademark.
Moreover, the Complainant contends that the Respondent is not affiliated or connected with the Complainant in any way. The Complainant has never licensed or authorized the Respondent to use the BAYLINER trademark or any of the Complainant’s trademarks, or to register any domain name incorporating the BAYLINER trademark. First, the Respondent registered the disputed domain name in 2013 and did not make use of the trademark BAYLINER prior to the Complainant’s adoption and use of the famous and distinctive trademark BAYLINER back in 1957. In addition, there is no evidence that the Respondent has been commonly known by the disputed domain name or that it has any rights which might predate those of the Complainant. Second, the Respondent is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the widely recognized BAYLINER name to lure Internet users looking for a BAYLINER boat, but actually sells them a competing boat brand.
The Complainant asserts that the Respondent is not and has never been an authorized dealer of BAYLINER boats, yet the Respondent chose the disputed domain name to create an impression of association with the Complainant.
The Complainant also submits that the Respondent’s registration and use of the disputed domain name was well after the Complainant’s use and registration of the BAYLINER trademark. The Respondent’s conduct clearly demonstrates bad faith because: (1) the Respondent knew or should have known of the Complainant’s rights in the BAYLINER trademark prior to registration of the disputed domain name; (2) the Respondent registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s services; (3) the Respondent engaged in bait and switch tactics; (4) the Respondent failed to respond to the Complainant’s demand letters; and (4) the Respondent used the Complainant’s copyrighted materials without authorization.
The Respondent states that the Complainant owns trademark rights in BAYLINER trademark only and not “BAYLINERBRASIL”. The use of the “BAYLINERBRASIL” in the disputed domain name reflects the name of the company DBA legally established in the state of Florida, United States, and is a common word and used in various websites.
The Respondent also contends that it has been selling the BAYLINER brand of boats to Brazil and other countries through South America and the Respondent’s other companies, one such being J&R Imports Inc, a company incorporated in the state of Florida.
The Respondent submits that the disputed domain name was neither registered nor is being used in bad faith since the Respondent is doing business as “Bayliner Brasil Exports”, a registered name in the state of Florida which reflects the disputed domain name.
As previously noted, the Complaint was filed in English and the Respondent did not object to the Complainant’s request for English to be the language of the proceedings. The Panel also notes that the Response was submitted in English. Therefore, it would appear that the Respondent has had no difficulty in understanding the Complainant’s contentions. Accordingly, the Panel accepts the Complaint in English and decides to render the Decision in English.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used by the Respondent in bad faith.
The Complainant has trademark registrations consisting of the BAYLINER word mark around the world including the United States and Brazil with registration in Brazil dating back to 1996.
The Panel finds that the disputed domain name <baylinerbrasil.com> is confusingly similar to the trademark BAYLINER, since the disputed domain name consists of the Complainant’s trademark BAYLINER followed by the geographically descriptive word “Brasil” and the generic Top-Level Domain (gTLD) “.com”.
The registration of a domain name consisting of a trademark followed by a geographical description has long been held to be confusingly similar to the trademark included in the domain name. Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (<walmartcanada.com> found confusingly similar to WAL-MART trademark).
It is also a well-established rule that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the gTLD, in this case “.com”, may be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the disputed domain name is identical to the BAYLINER trademark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
The Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. Here, the Complainant has succeeded in establishing this prima facie case.
The burden of production therefore shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent contends that it has been selling Bayliner brand of boats to Brazil and other countries through South America and the Respondent’s other companies, one such being J&R Imports Inc, a company incorporated in the state of Florida. The Respondent also states that it does not need to be an authorized dealer of Bayliner boats to sell or export bayliner brand boats because the services offered by the Respondent on the disputed domain name <baylinerbrasil.com> forms no impression of association with the Complainant.
According to the consensus view in relation to the issue of resellers as summarized in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark […]”
This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
“Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>)”.
In the present case, the Panel is of the opinion that while someone may be legally entitled to offer for sale/resale a trademark owner’s genuine trademarked products, namely boats in the present case, without the express authority of the relevant trademark holder, this does not necessarily extend to the right to do so through a domain name that is confusingly similar to that trademark owner.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
As regards the registration of the disputed domain name in bad faith, the reputation of the Complainant’s trademark BAYLINER in the field of boats is established and the Panel finds that the Respondent clearly knew that the disputed domain name <baylinerbrasil.com> was confusingly similar to the Complainant’s trademark, even though the related website contains a reference, in small letters, stating that it is “Not Affiliated with Bayliner - Searay are registered trademarks of Brunswick Corp.”.
The Panel also finds that the content of the website related to the disputed domain misleads consumers, particularly because in the section entitled “por que baylinerbrasil” (in English “why baylinerbrasil”), a direct reference is made to the reputation of the trademark BAYLINER of the Complainant and to the company Brunswick Corporation, with the statement “O Grupo do qual a Bayliner faz parte” (in English “The Group to which Bayliner belongs”), which in the Panel’s opinion could imply that the Respondent is part of Brunswick Corporation.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
The Panel is satisfied that the Complaint was motivated solely by the Complainant’s desire to protect its trademark rights. There is nothing before the Panel to indicate that the Complaint was brought in bad faith. In view of the findings above in favor of the Complainant, the Panel makes no finding of reverse domain name hijacking.
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 <baylinerbrasil.com> be transferred to the Complainant.
Nuno Cruz
Sole Panelist
Date: February 11, 2014