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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Besilu Paso Fino Collection Ltd., Inc. v. Manager, Webserv

Case No. D2005-0841

1. The Parties

The Complainant is Besilu Paso Fino Collection Ltd., Inc., Miami, Florida, United States of America, represented by Lott & Friedland, PA, United States of America.

The Respondent is Manager, Webserv, located at Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <besilucollection.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2005. On August 5, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 9, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 August 16, 2005. In accordance with Rules, paragraph 5(a), the due date for Response was September 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2005.

The Center appointed Richard Tan as the sole panelist in this matter on October 4, 2005. 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.

4. Factual Background

The Complainant is a Florida corporation engaged in the business of breeding, selling and training Paso Fino horses.

Its President and founder, Benjamin Leon, Jr., averred in an affidavit filed in the present proceedings that he had created the name “BESILU” by taking the first two letters of his name, his wife’s name, Sylvia, and his children’s names, Lurdes, and that he began the horse breeding, horse training and horse sales operations under the name “BESILU COLLECTION” in 1982, which name has been used to describe the collection of Paso Fino show horses bred and offered for sale by the Complainant. The Complainant has also averred that its “BESILU COLLECTION” horses have won numerous championship titles and consequently, considerable acclaim.

The Complainant has also registered United States service mark no. 2,034,981 for “BESILU” in the United States on February 4, 1997, in Class 42 in respect of horse farms, horse breeding and stud services. The Complainant avers that this registration is incontestable under US law, and in full force and effect. The Complainant also claims common law rights in the marks “BESILU”, “BESILU COLLECTION” and “THE BESILU COLLECTION” through continuous and extensive use of the same over some 20 years.

The Complainant also claims to have been the immediate past registrant of the subject domain name, and had used the same during the last five years to advertise and promote its operations and horses under the “BESILU COLLECTION” mark over the Internet. The Complainant claims that it had inadvertently allowed the domain name registration to expire due to a failure of the Complainant’s server and a change of certain credit card information, which resulted in the immediate purchase of the domain name by the Respondent upon its expiry.

The Respondent registered the disputed domain name with the Registrar on May 17, 2005. The disputed domain name resolves to an advertising portal displaying the words “besilucollection.com” and contains links to various services and websites relating to the breeding, selling and training of Paso Fino horses, none of which are connected with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends primarily as follows:

(a) the disputed domain name <besilucollection.com> is confusingly similar to the Complainant’s registered service mark “BESILU” and service marks and trade name “BESILU COLLECTION” and “THE BESILU COLLECTION” in that it incorporates Complainant’s service mark in its entirety and its common law trade name “BESILU COLLECTION”;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name under Paragraph 4(c)(i) because it has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Further, the Complainant avers that the Respondent was using the disputed domain name to divert Internet users to its website for commercial gain. The Complainant also avers that the Respondent is not commonly known by the disputed domain name and as the Complainant had created the “BESILU” mark, and has registered and used the subject domain name for many years, the Respondent could not rightfully do so.

(c) the Respondent’s registration and use of the disputed domain name is in bad faith, as by using the disputed domain name, the Respondent had intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website.

B. Respondent’s Submissions

The Respondent has not filed any Response.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s 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 Respondent domain name has been registered and is being used in bad faith”.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001,

A. Identical or Confusingly Similar Domain Name

The Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights.

The Complainant has furnished prima facie evidence that it is the owner of the service mark “BESILU” in the United States, and accordingly has rights in the same.

The disputed domain name incorporates the Complainant’s service mark in its entirety and only differs from this mark by the addition of the generic term “collection”.

Whilst the disputed domain name is not identical to the Complainant’s registered service mark, this Panel finds that it is confusingly similar thereto, notwithstanding the addition of the word “collection”. It is well established that a domain name composed of a trade mark coupled with a generic term may yet be regarded as confusingly similar to the trade mark: Yahoo! Inc v Hangzhou Hi2000 InfoTech Co Ltd a/k/a Hangzhou Shixin Info Tech Co Ltd, NAF Claim No. FA00141825).

In any event, the Complainant also claims common law rights to “BESILU COLLECTION”, relying on its use thereof as a trade name for its horses for many years.

In order to establish such common law rights, however, the Complainant must show that the name has become a distinctive identifier associated with the Complainant, and relevant evidence of this would include the length and amount of sales under the mark, nature and extent of advertising, and media recognition.

In this regard, the Panel notes that the “BESILU” name was invented and the Complainant has further exhibited various catalogues, magazines and third party editorial write-ups referencing the “BESILU” and “BESILU COLLECTION” names. The Panel is satisfied, for the purposes of these proceedings, that it has produced sufficient evidence demonstrating that the Complainant can assert common law rights in “BESILU COLLECTION”.

The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s registered service mark, and is also identical to the “BESILU COLLECTION” mark in which the Complainant has unregistered common law rights, and that paragraph 4(a)(i) of the Policy has accordingly been satisfied.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent was not commonly known by the same.

Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the disputed domain name, namely:

(i) before any notice to the Respondent of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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”.

If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

To establish that the Respondent has rights or legitimate interests in the disputed domain name under Paragraph 4(c)(i) the critical requirement is the Respondent’s use of the domain name in connection with a bona fide offering of goods or services.

The Panel notes the only use the Respondent has put the disputed domain name to has been to provide sponsored equine-related links, often to the Complainants’ competitors. This would not constitute a bona fide offering of goods or services. The Respondent also has no legitimate interest in using the “BESILU COLLECTION” mark in a domain name that directs internet users to a website where services other than those of the Complainant’s are offered to viewers. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

Moreover, Respondent’s use of a domain name identical to Complainant’s mark to advertise and sell competing products reveals Respondent’s attempt to divert Internet users to its site through confusion as to its affiliation with Complainant’s business. This activity is not a bona fide offering of goods.

Since the Respondent has not filed a Response, the Panel would also infer that the Respondent has no trade marks or service marks identical to “BESILU COLLECTION” (See Nat’l Academy of Recording Arts & Sciences Inc. v. Lsites, NAF Claim No. FA00103059). There is also no evidence to suggest that the Respondent has been commonly known by the disputed domain name.

Accordingly, paragraphs 4(c)(i) and 4(c)(iii) of the Policy are not established.

Based on the information available to the Panel in the Complaint, there is nothing to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. In the circumstances, the Panel finds that the Complainant has sufficiently discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that the Respondent has registered or has 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 your 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.

The Panel notes that the disputed domain name is identical to the Complainant’s trade name and confusingly similar to the Complainant’s service mark, and the website provides “Sponsored Links” to third party sites offering horse breeding and selling related services in competition with the Complainant. Further, the Respondent had secured the registration of the subject domain name upon the inadvertent failure of the Complainant to renew the same.

In the absence of a Response, the Panel is satisfied that this indicates that the Respondent has opportunistically exploited the Complainant’s failure to renew the registration by securing the disputed domain name, and thereafter placing sponsored links to divert Internet users to the services of the Complainant’s competitors. By doing so, particularly since the Complainant had previously used the domain name in connection with its own website advertising its own horse breeding services, the Respondent has used the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site within the meaning of paragraph 4(b)(iv) of the Policy.

The Complainant further alleges that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.

In this regard, the Complainant asserts that the Respondent has been ordered by at least one other administrative panel constituted under the Policy to transfer domain names registered by the Respondent, namely: Kushwood Manufacturing, Inc. v Manager , Webserv c/o Webserv, LLC, NAF Claim No. FA00436881.

Accordingly, the Panel finds that the conduct of the Respondent has registered and used the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

In the absence of a response, the Panel also notes, without concluding, that the Respondent may have engaged in a pattern of registering domain names in order to prevent the owner of the relevant trademark or service mark from reflecting the mark in a corresponding domain name. If this is so, it evidences bad faith under paragraph 4(b)(ii) of the Policy.

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 <besilucollection.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: October 18, 2005