Complainant is Boondocker LLC of Idaho Falls, Idaho, United States of America (“United States”), represented by Parsons Behle & Latimer, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Corey Boston of Colorado Springs, Colorado, United States.
The disputed domain name <boondocker.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 5, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. On September 26, 2018, Respondent requested a four-day extension in which to file a response. The Response due date was extended to October 1, 2018, pursuant to paragraph 5(b) of the Rules. On October 2, 2018, the Center received an email communication from Respondent to which the Center sent an email communication inviting the Parties to explore settlement negotiations. As Complainant did not request suspension, the Center informed the Parties that it would proceed to panel appointment on October 12, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 22, 2018. 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, Boondocker LLC, is a supplier of performance vehicle parts, such as turbochargers, for snowmobiles and all-terrain vehicles. Complainant is based in the United States in Idaho Falls, Idaho. Complainant has used the name and mark BOONDOCKER in connection with its vehicle parts and has obtained a United States federal trademark registration for the BOONDOCKER mark (Registration No. 4,340,886) that issued on May 28, 2013 with a claimed first use date of September 1, 2002. Complainant also owns and uses the domain name <boondockers.com> for a website promoting Complainant’s BOONDOCKER products. Complainant registered the <boondockers.com> domain name in 2002.
Respondent, Corey Boston, is an individual based in Colorado Springs, Colorado, United States. Respondent appears to be affiliated with a Colorado entity by the name of Advantage Motorsports, which is also a seller of performance vehicle parts for, inter alia, snowmobiles and all-terrain vehicles. The disputed domain name was registered on November 15, 1998 and was acquired by Respondent at some point in late 2015 or early 2016. In 2017, and for part of 2018, the disputed domain name redirected to a website operated by Advantage Motorsports at “www.advantagetuning.com” which offered competing performance vehicle parts such as turbochargers. In or about early August 2018, Respondent posted a website at the disputed domain name that was almost identical to the website at “www.advantagetunning.com” and which featured the name “Boondocker Supply” with a mountain logo.
On August 8, 2018, Complainant sent Respondent a demand letter. In response, Respondent made some small modifications to its website at the disputed domain name, but continued using the disputed domain name with its website to offer competing performance vehicle parts. The disputed domain name currently resolves to an inactive Shopify web page.
Complainant asserts that it adopted and has used the BOONDOCKER trademark since 2002 in connection with Complainant’s performance vehicle parts, such as turbochargers. Complainant argues that it has established common law rights in the BOONDOCKER mark going back to 2002 on account of its continuous and widespread use of the BOONDOCKER mark and as a result of the reputation it enjoys as an industry leader in aftermarket parts for snowmobiles and all-terrain vehicles. Complainant also asserts that it is the owner of rights in the BOONDOCKER mark in connection with its products by virtue of its 2013 United States trademark registration for the BOONDOCKER mark.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s BOONDOCKER mark, as the disputed domain name solely consists of the BOONDOCKER mark with the non-distinguishing top-level domain extension “.com.”
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as (i) Respondent is not commonly known by the disputed domain name, and (ii) Respondent has not used the disputed domain name with a bona fide offering of goods and services. In that regard, Complainant maintains that Respondent has used the disputed domain name to divert web users to Respondent’s website at “www.advantagetuning.com” in order to offer competing products for sale.
Lastly, Complainant asserts that Respondent registered and had used the disputed domain name in bad faith. Complainant contends that Respondent registered the disputed domain name years after Complainant used its BOONDOCKER trademark and obtained a United States federal trademark registration for the BOONDOCKER mark, and did so in order to disrupt Complainant’s business and to misleadingly attract Internet users to Respondent’s website at “www.advantagetuning.com” for the purpose of selling competing products. Complainant further contends that because the Parties are both located in the mountain west region of the United States and serve a nearly identical customer base, Respondent’s registration and use of the disputed domain name to sell competing products on a website with the name “Boondocker Supply” and a similar mountain logo is nothing more than an attempt to trade unfairly on the goodwill associated with Complainant’s BOONDOCKER mark.
Respondent did not reply to Complainant’s contentions, despite requesting a four-day extension to respond.
On October 2, 2018, Respondent sent the Center an email asserting that a settlement had been reached with Complainant and that Respondent would transfer the disputed domain name to Complainant. Nothing further occurred in this regard, and Respondent remained silent and did not submit a response.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name 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 was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a trademark registration for the BOONDOCKER mark in the United States (and had obtained such before Respondent acquired the <boondocker.com> disputed domain name). Complainant has also provided some evidence, none of which is contested by Respondent, that Complainant developed common law or unregistered rights in the BOONDOCKER mark in connection with its performance vehicle parts products well before Respondent registered the disputed domain name. WIPO Overview 3.0 at section 1.3.
With Complainant’s rights in the BOONDOCKER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (such as “.com”) or the applicable country code Top Level Domain) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is identical or confusingly similar to Complainant’s BOONDOCKER mark as the disputed domain name fully consists of the BOONDOCKER mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s BOONDOCKER mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, and Respondent’s failure to file a response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name. Since registering the disputed domain name Respondent has merely used the disputed domain name to attract web users to its website for purposes of selling competing performance vehicle parts products to essentially the same consumer base targeted by Complainant. Such use of the disputed domain name does not constitute a legitimate use and is essentially parasitic, particularly where, as here, the evidence shows that Respondent not only offered for sale competing products, but has done so by prominently displaying the name “Boondocker Supply” on its website along with a logo that was reminiscent of Complainant’s mountain logo for its BOONDOCKER mark.
Given that Complainant has established with sufficient evidence that it owns rights in the BOONDOCKER mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Given Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s use of the disputed domain name which consists of Complainant’s BOONDOCKER mark to sell competing performance vehicle parts to the same consumers targeted by Complainant is being done opportunistically and in bad faith. The remaining question is whether the conjunctive requirement of bad faith registration has been established by Complainant.
Here, the disputed domain name was registered in 1998, some four years before Complainant adopted the BOONDOCKER name and mark for its products. Complainant could not have brought a UDRP back in 2002, as Complainant’s rights in BOONDOCKER post-dated the registration of the disputed domain name. As a result, Complainant registered and has been using since 2002 the domain name <boondockers.com> to promote its products.
Based on the evidence, none of which is contradicted by Respondent who failed to submit a response, Respondent’s entity Advantage Motorsports was incorporated in Colorado on January 13, 2016 and Respondent adopted the trade name “Boondocker Supply” for its Advantage Motorsports company on March 15, 2018.1 What the evidence submitted shows is that Respondent acquired the disputed domain name at some point in 2016 and then started using the disputed domain name in 2017 to redirect web users to Respondent’s website at “www.advantagetuning.com” (a domain name registered in September 2015) to sell competing products, and then in August 2018 with a website that prominently displayed the name “Boondocker Supply” with a logo that mirrored Complainant’s mountain logo for its BOONDOCKER mark.2
As there is no evidence before the Panel that Respondent acquired any legitimate trademarks rights in the BOONDOCKER mark for performance vehicle parts that might have existed through use of the disputed domain name prior to 2002, when Complainant adopted the BOONDOCKER mark, it seems more likely than not that Respondent opportunistically acquired the disputed domain name in 2016 for the purpose of using such to attract consumers to Respondent’s website. Given that Complainant had established rights in the BOONDOCKER mark in 2016, by virtue of its use and registration of the BOONDOCKER mark in the United States, Respondent’s actions were in bad faith and knowingly meant to take advantage of the goodwill associated with Complainant’s BOONDOCKER mark. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <boondocker.com> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: November 4, 2018
1 The Panel notes that while Respondent requested and obtained the automatic four-day extension to file a response, Respondent never filed a response. Respondent was thus clearly aware of the proceeding and Complainant’s contentions, but chose not to defend the matter or contest.
2 While Complainant has argued and provided evidence that Respondent’s registration of the disputed domain name was well after Complainant obtained its United States federal trademark registration for BOONDOCKER in 2013, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival WhoIs pages for the disputed domain name in the Domaintools.com records. WIPO Overview 3.0 at paragraph 4.8. The Panel has confirmed that the disputed domain was in the name of another party at the end of 2015, and that the disputed domain name appears to have expired in late 2015, was subsequently acquired through an auction in late 2015 or early 2016, and then registered under the Domains By Proxy privacy service.