Decision for dispute CAC-UDRP-108754

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent should be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant asserts it has a United States trademark registration for "BOSTIK". This registration predates the registration date of the disputed domain name by over forty years.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO 7 May 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has clearly satisfied such in relation to the trademark BOSTIK.

The next question is whether the disputed domain name is confusingly similar to the BOSTIK trademark.

The Panel disregards the gTLD suffix ".com" for the purpose of this comparison. Past panels have found that gTLD's are of no relevance in determining whether a domain name is identical or confusingly similar to a trademark (See F.Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451). Domain names, and the format in which they appear, are globally observed by internet users and consumers every day. They are part of everyday human experience and commonly marketed via offline means (e.g. signage, branded stationary, merchandise, print advertisements, television) in addition to being observed online. Hence, the average person who is using the internet is going to clearly understand that in the format of a domain name the gTLD at the end of the domain name is not commonly an element that identifies one particular trader, but rather is used generically by multiple traders. This understanding remains so for common gTLDs like ".com", ".net" and ".org" and for less common gTLDs. This common format of domain names is now well understood by the average person and for this reason they will not see ".com" as being of any brand significance.

The only remaining difference between the disputed domain name and the BOSTIK trademark is the inclusion of the single letter "s" (i.e. BOSTIKS). Such a single letter difference is unlikely to be noticed by a web-user and, in any event, even if it was noticed it simply pluralizes BOSTIK and would therefore still be seen as a reference to the Complainant.

The disputed domain name is therefore confusingly similar to the BOSTIK trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

The Respondent is not identified in the Whois database as having a name related to the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the owner of the disputed domain name. Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”).

There are no other facts that would indicate the Respondent has any rights or legitimate interests in the disputed domain name. In such circumstances, the Complainant has made out its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

The Complainant's trademark is distinctive and well known internationally. Further, its reputation is long-standing.

These facts alone would render it improbable that the Respondent was unaware of the disputed domain name at the time of registered it. However, what puts the existence of the Respondent's knowledge beyond doubt is the fact the Respondent has redirected the disputed domain name to the Complainant's official website and then proceeded to send e-mails impersonating the Complainant. This conduct together can only be interpreted as a conscious plan to deceive e-mail recipients into providing payment information. Once provided, it can further be inferred that such information could only be used fraudulent purposes. There is no other explicable reason why the Respondent would engage in such dishonest conduct.

The disputed domain name has been registered and is being used in bad faith.