Complainant is TPI Holdings, Inc. of Norfolk, Virginia, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China.
The disputed domain name <boatrader.com> is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 17, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 19, 2014, the Complainant confirmed its request that English be the language of the proceeding. An email communication was received from an entity named NexGen International requesting Chinese to be the language of the proceeding on September 20, 2014.
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 Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. An email communication was received from NexGen International on October 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2014. On October 17, 2014, an email communication was received from Domainers Choice.
The Center appointed Yijun Tian as the sole panelist in this matter on October 27, 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.
Complainant, TPI Holdings, Inc., is a company incorporated in Norfolk, Virginia, United States of America (the US). It is a leading boat trader in the US. Complainant has exclusive rights in the BOAT TRADER mark (since September 14, 1982) and the BOAT TRADERONLINE.COM mark (since August 17, 2004) (hereinafter the BOAT TRADER Marks) in the US. Over the course of the past twenty years, Complainant has expended hundreds of thousands of dollars marketing and promoting its goods and services under the BOAT TRADER Marks.1
Complainant is also the owner of the domain names <boattraderonline.com>, <yachttrader.com>, and <sailboattraderonline.com>, all of which are pointed to the website “www.boattrader.com”. Over the years, Complainant’s “www.boattrader.com” site has posted millions of ads and had tens of millions of visitors. In the last 3 years alone, almost 900,000 boats have been listed for sale on Complainant’s “www.boattrader.com” site.
Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China. The disputed domain name <boatrader.com> was registered on March 25, 1999, long after the BOAT TRADER Marks became famous.
(a) The disputed domain name is confusingly similar to Complainant’s marks
The disputed domain name is virtually identical to Complainant’s BOAT TRADER mark, constituting a slight misspelling by its use of only one “t” instead of two.
It is also confusingly similar to Complainant’s BOATTRADERONLINE.COM mark because it adopts in its entirety the most salient portion of that mark.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name
Complainant’s first use and first registration of its BOAT TRADER mark predate any use Respondent may have made of <boatrader.com> as a trade name, domain name, mark, or common name.
The disputed domain name was registered in 1999, more than twenty years after Complainant first used, and more than fifteen years after Complainant first registered, its BOAT TRADER Marks.
Complainant began using the BOAT TRADER Marks online almost three years before Respondent registered the disputed domain name.
Because Complainant has both federal registrations and common law use that predate Respondent’s domain name registration, and because Respondent is charged with constructive knowledge of Complainant’s trademark registrations and, on information and belief, Respondent in fact knew of Complainant’s extensive prior uses, Respondent has no intellectual property rights, or legitimate interests, in the disputed domain name.
A visit to the disputed domain name reveals that it is used for commercial purposes and it is not used to trade boats. At present, every visit to the site results in the visitor being informed he has been selected to take a survey, and at the conclusion of the survey, the visitor is invited to click on links for “special offers” awarded for having taken the survey. Clicking on the links results in revenues for Respondent from the third parties whose “special offers” are chosen by Respondent’s website visitors.
In the past, Respondent used the site for traditional click-through advertising and obtained revenues any time an Internet user clicked on one of its linked pages.
Respondent does not make a “fair use” of the disputed domain name <boatrader.com> because Respondent: (i) uses the disputed domain name for commercial purposes with the intent to reap commercial gain; (ii) does not have any rights or legitimate interests in the disputed domain name; and (iii) does not use the disputed domain name to describe its services, because “boatrader” does not describe the business in which Respondent is engaged.
(c) The disputed domain name was registered and is being used in bad faith
Respondent previously used the disputed domain name for a traditional click-through advertising site and more recently, has used the site for another type of click-through advertising scheme, in either instance receiving payments from the third parties who are promoted on Respondent’s site.
To obtain traffic to its site, Respondent relies on the trickery of a domain name that is virtually identical to and a predictable misspelling of Complainant’s mark to confuse Complainant’s customers or potential customers and divert them to its site. Respondent’s intent has been and is for the diverted Internet users to click on the links on its site, thereby enabling Respondent to collect revenues from the operator of the “clicked on” linked site.
In the past, when the site was used for the more traditional click-through advertising, Respondent displayed categories related to Complainant’s services, such as “Used Boats for Sale,” “Boats for Sale,” “Boat loan,” and “Boat Insurance”, thereby tricking each unwitting visitor into thinking he had reached Complainant’s site and into clicking on a link that matched his interest.
At present, unwitting visitors who mistyped <boatrader.com> instead of <boattrader.com>, similarly are not alerted in any way that they have not reached Complainant’s site. They are lured into taking a “survey”. After taking the survey, they are lured into clicking on “special offer” items. Each offer takes the user to a new site.
Respondent then obtains payment from the third parties whose “offers” are promoted on the “www.boatrader.com” site and whose “offers” are chosen by its visitors for viewing or purchase. Respondent thus tricks visitors into “clicking on” the “special offers,” thereby transporting the visitor to a linked site, whereupon Respondent obtains click through revenues from those sites or some portion of the revenues from a user’s purchase of the particular offer.
By registering and using the disputed domain name for the purpose of linking to sites from which Respondent may obtain “click-through” or other revenues, Respondent has intentionally attempted to attract Internet users to its website and other online locations, for commercial gain, by creating a likelihood of confusion with Complainant’s BOAT TRADER Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the links on its site. The Policy specifically identifies such conduct as evidence of bad faith under paragraph 4(b)(iv).
Because the click-through website owner receives revenues from third parties whose websites are accessed via its site whenever users “click through” from its site to sites for which links are displayed, such “click-through” sites have repeatedly been determined to show a respondent’s bad faith intent to profit.
In summary, Respondent is wrongfully using the disputed domain name to trade upon and profit from the goodwill that Complainant has built in its BOAT TRADER Marks.
Respondent did not formally reply to Complainant’s contentions.
On October 7, 2014, an email communication was received from NexGen International (via “[…]@nexgeninternational.net”, which is not the registered contact of Respondent with the Registrar) alleging that the disputed domain name was registered to build a website related to radar technology for boats. However, no evidence was submitted to support this allegation.
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Respondent is clearly not only familiar with the requested English language, but also targets and thereby confuses only English-speaking Internet users, and derives its revenues from English language advertisers.
(b) All of the content of the website accessible at the disputed domain name is in English, does not have any Chinese translation capability, and even periodically features an audible welcome and introduction in English that is similar to the displayed welcome message.
(c) All of the links on the website are to sites that are in English, and the earlier version of the website was also only in English.
(d) All of the comments posted on the site by Internet users are in English.
(e) The registration agreement is published in English on the website of the Registrar.
(f) Complainant resides in the United States. There is no evidence where the true registrant resides since the named Respondent is merely a privacy service that is an affiliate of the registrar, not the true registrant. Accordingly, there is no evidence regarding the language of the country of domicile of the true registrant.
(g) The trademark that is the basis for the Complaint is registered in English, and the slightly misspelled copy of the trademark is displayed by Respondent only in English.
(h) Accordingly, because Respondent clearly understands English and seeks to confuse English-speaking Internet users and to derive revenues from English-language advertisers that Respondent promotes on its site, Complainant submits the appropriate language for conducting these proceedings is English.
On September 20, 2014, NexGen International made a submission with respect to the language of the proceeding, and objected to the use of English as the language of the proceeding. NexGen International filed its Languages Request in Chinese, and has requested that Chinese be the language of the proceeding for the following reasons:
(a) The company, which signed the registration agreement, is located in China. The company was set up in China.
(b) The language of the registration agreement is Chinese.
(c) The website content for playback varies in accordance with the regions in which consumers use the website. The language to play relevant advertisements will be various in accordance with the regions.
(d) The language of the administrative proceeding shall be mainly Chinese.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
On the record, Respondent (“Private Registration, WhoisGuardService.com”) appears to be an individual or company located in China, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <boatrader.com> is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) It seems that the website accessible at the disputed domain name mainly targets English-speaking Internet users; (c) All of the content of the website is in English, does not have any Chinese translation capability, and even periodically features an audible welcome and introduction in English that is similar to the displayed welcome message; (d) All of the links on the website are to sites that are in English, and the earlier version of the website was also only in English; (e) All of the comments posted on the site by Internet users are in English; (f) the Center has notified Respondent of the proceedings in both Chinese and English; (g) the Center informed Respondent that it would accept a Response in either English or Chinese.
The Panel also takes into consideration the fact that Complainant is a company from the United States and does not have knowledge of Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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 in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the BOAT TRADER Marks acquired through registration and use. The BOAT TRADER Marks have been registered in the United States since 1982, and Complainant has a widespread reputation as a leading boat trader in the Unites States.
According to the information provided by Complainant, Complainant has adopted and used numerous marks incorporating a vehicle term together with the term “trader” for more than 35 years, including AUTO TRADER, BOAT TRADER, and RV TRADER, among numerous others. Complainant first began using the mark BOAT TRADER and distributing periodic magazines under that mark in 1976.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The WIPO Overview 2.0, paragraph 1.10, states: “Consensus view: A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
The disputed domain name is virtually identical to Complainant’s BOAT TRADER Marks, constituting a slight misspelling (typosquatting) by its use of only one “t” instead of two. Thus, the Panel finds that the difference is not sufficient to negate the confusing similarity between the disputed domain name and the BOAT TRADER Marks (see also, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971).
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that respondent has rights or legitimate interests in a domain name:
(i) before any notice to respondent of the dispute, respondent’s use 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) respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG , DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the registered BOAT TRADER Marks in the US since 1982, which long precedes Respondent’s registration of the disputed domain name (March 25, 1999). According to Complainant, Complainant has a widespread reputation as a leading boat trader in the United States. Complainant first began using the mark BOAT TRADER and distributing periodic magazines under that mark in 1976. Complainant’s website “www.boattrader.com” today offers a wide selection of boats for sale in the United States, posting over 125,000 listings on average at any given time, and receiving more than 24,000,000 visitors per year.
Moreover, Respondent is not an authorized dealer of Boat Trader branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “boat trader” in its business operation or the use of the BOAT TRADER Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BOAT TRADER Marks or to apply for or use any domain name incorporating the BOAT TRADER Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <boatrader.com> on March 25, 1999. The disputed domain name is identical or confusingly similar to Complainant’s BOAT TRADER Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, a visit to the disputed domain name <boatrader.com> reveals that it is used for commercial purposes and it is not used to trade boats. At present, every visit to the site results in the visitor being informed he has been selected to take a survey, and at the conclusion of the survey, the visitor is invited to click on links for “special offers” awarded for having taken the survey. Clicking on the links results in revenues for Respondent from the third parties whose “special offers” are chosen by Respondent’s website visitors.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s websites or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s websites or location or of a product or service on respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the BOAT TRADER Marks with regard to its boat trade services. Complainant has registered its BOAT TRADER Marks in the United States since 1982. Complainant first began using the mark BOAT TRADER and distributing periodic magazines under that mark in 1976. Its main website “www.boattrader.com” today offers a wide selection of boats for sale in the United States, posting over 125,000 listings on average at any given time, and receiving more than 24,000,000 visitors per year. It is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. Moreover, according to Complainant, the disputed domain name it is not currently used to trade boats. By contrast, every visit to the site resolved by the disputed domain name results in the visitor being informed he has been selected to take a survey, and at the conclusion of the survey, the visitor is invited to click on links for “special offers” awarded for having taken the survey. The Panel finds that the BOAT TRADER Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s BOAT TRADER Marks.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”. Complainant claimed that Respondent uses the disputed domain name for commercial purposes with the intent to reap “commercial gain”, and Respondent has intentionally attempted to attract Internet users to its website and other online locations, for “commercial gain”, by creating a likelihood of confusion with Complainant’s BOAT TRADER Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the links on its site.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477).
Given the widespread reputation of the BOAT TRADER Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. Respondent has through the use of the confusingly similar disputed domain name created a likelihood of confusion with the BOAT TRADER Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the disputed domain name is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not.
And, as mentioned above, the disputed domain name is not currently used to trade boats. Every visit to the site results in the visitor being informed he has been selected to take a survey, and at the conclusion of the survey, the visitor is invited to click on links for “special offers” made by the third parties. The Panel finds that by linking the disputed domain name to sites from which Respondent may obtain “click-through” or other revenues, Respondent has intentionally attempted to attract Internet users to its website and other online locations, for commercial gain, by creating a likelihood of confusion with Complainant’s BOAT TRADER Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the links on its site, which is specifically identified as evidence of bad faith registration and us under paragraph 4(b)(iv) of the Policy.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, e Panel orders that the disputed domain name <boatrader.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: November 24, 2014
1 Complainant first began using the mark BOAT TRADER and distributing periodic magazines under that mark in 1976. Complainant first began using its BOAT TRADER mark online in 1996, and first began using its BOAT TRADERONLINE.COM mark in 2001.