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WIPO Arbitration and Mediation Center

Complainant is TPI Holdings, Inc. According to its complaint, it is a corporation incorporated under the laws of the State of Delaware, USA, with its principal place of business in Atlanta, Georgia, USA.

The first Respondent in this proceeding is the entity Marinebay. The second Respondent, Mark Geiger, is listed as the administrative contact for the domain name in question and apparently shares the same address in Port St. Lucie, Florida, USA.

The dispute is with respect to the following domain name (hereafter "the domain name"):

<aboattrader.com>

The registrar with which this domain name is registered is Registrar.com, 575 8^th Avenue, New York, NY, USA (hereafter "the registrar").

The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").

The current dispute lies within the scope of the Policy, so that the Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar and the Respondents clearly incorporate the Policy, so that Respondents were notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.

The timetable for document submissions in this case is extensive due to the number of supplementary requests and motions filed by the parties.

An electronic copy of the complaint was filed on June 30, 2001. A hardcopy of the complaint was filed on July 2, 2001. A request for Registrar Verification was made to the Registrar of the domain name on July 3, 2001, and such Verification was made on July 5, 2001. On July 9, 2001, the Center notified the parties of a deficiency on the front page caption of the Complaint, which listed only "Mark Geiger" as the Respondent and registrant of the domain name. On July 9 and 10, 2001, the Center received from Complainant a revised caption page for the Complaint indicating MARINEBAY as a Respondent in addition to Mark Geiger. On July 10, 2001, the Center notified the Registrar of the filing of the complaint with the Center, and notification of the complaint was sent to Respondent by various means.

On July 11, 2001, the Center received an informal email from Respondent Mark Geiger indicating that a formal Response would be forthcoming. On July 29/August 2, 2001, the Center received email and hard copies of the Response, respectively.

On August 3 to 6, 2001, the Center received from Complainant in email and hard copy format respectively, "Complainant’s Request for Permission to Submit a Reply to Respondent’s Response". On August 10/14, the Center received from Respondent in email and hard copy format respectively, "Respondent’s Motion Opposing Complainant’s Request for Permission to Submit a Reply to Respondent’s Response."

On August 21, 2001, the Center appointed a single-member Panel to decide the case.

Upon reviewing the motions and documents presented by the parties, the Panel issued its Procedural Order No. 1 in the case on August 28, 2001. Under this Procedural Order, Complainant was allowed to and did submit a Reply to Respondent’s Response, such reply being expressly limited by this Order to the issue of the generic nature of Complainant’s trademark, which was raised by Respondent in its Reply. To assure fairness to both parties, Respondent was allowed a further Rebuttal to Complainant’s Reply, but only with new arguments so as to avoid repetitiveness. Respondent has not submitted a Rebuttal.

A decision on the Complaint is normally due within 14 days of the appointment of the Panel, under Paragraph 15(b) of the Rules. However, extensions were granted for the decision because of the number of procedural motions presented by the parties and the need for the Panel to clarify some of the key issues in the case by requesting further documentation from the parties.

There have been no further submissions by either side as of the date of this decision.

Complainant states that for a long time prior to Respondent’s registration of the domain name <aboattrader.com>, Complainant has continuously owned and used the name and trademark "BOAT TRADER" in connection with its boat and recreational vehicle trade advertisement services, with two of Complainant’s "BOAT TRADER" marks having been registered with the U.S. government authorities, i.e. Registration Number 1,208,249, registered on September 14, 1982 and Registration Number 2,389,118 registered on September 26, 2000. See Complaint, paragraph 10.

In Paragraph 12(c)(ii) of its Complaint, Complainant alleges that Respondents have registered and used the domain name <aboattrader.com> for a website at <www.aboattrader.com> where similar services are offered as those of Complainant – the advertising for sale and/or trade of boats.

As a result, Complainant asks this Panel to issue a decision to the effect that the domain name be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.

To support its contentions, Complainant, in Paragraph 12 of the Complaint, alleges that (1) the domain name is identical or confusingly similar to Complainant’s "BOAT TRADER" marks referred to in Section 4 of this decision; (2) the Respondents have no rights or legitimate interests in the domain name; and (3) the domain name is registered and used in bad faith.

As regards element (1) above, the confusion element, Paragraph 12(a)(ii) of the Complaint states that Respondents are merely adding the word "a" as a common prefix to Complainant’s registered "BOAT TRADER" trademark which does not further distinguish Respondent’s usage from the "BOAT TRADER" mark in any meaningful way; that this minimal, common addition does create a strong possibility of confusion regarding the source and ownership of Respondents’ website.

As regards element (2) above, the lack of legitimate rights or interest in the domain name element, Paragraph 12(b)(i) of the Complaint asserts that Respondents have no intellectual property rights in the domain name, and are using the domain name without the consent of Complainant. It states that Complainant’s first use and first registration of the BOAT TRADER mark predate any use or registration of "aboattrader" as a domain name.

As regards element (3) above, the bad faith element, Paragraph 12(c) of the Complaint alleges that (i) Respondents had constructive (ie, imputed) knowledge of Complainant’s pre-existing BOAT TRADER marks because of their notoriety in publications, including on the internet and in Florida where Respondents reside and where a large volume of the boat sale advertisement market is targeted; (ii) Respondents are offering identical goods and services as Complainant on its website; and (iii) the look and feel, format and style of Respondent’s website is virtually identical to that of Complainant.

B. The Response

As regards element (1) above, the confusion element, Paragraph 3 of Respondent’s Response avers that "Respondent’s website is not confusingly similar to Complainant’s website [emphasis added]… At the time of filing the Complaint, the similarity of the Complainant’s and Respondent’s websites were merely industry marketing norms that many websites share." Respondents also state that they have redesigned their website to differentiate it from Complainant’s website [emphasis added]. See Response, Paragraph 4, at p. 6.

As regards element (2) above, the existence of legitimate rights by Complainant in the marks "BOAT TRADER", Respondents challenge these rights by their assertion that this name is too generic in nature to be accorded trademark protection, and by extension, to be accorded protection under the UDRP policy under which this case is to be decided. See Response, Paragraph 2.

As regards element (3) above, the bad faith element, Paragraph 3 of Respondent’s Response states that their use of a common website development tool indicates no act of bad faith. Paragraph 3, item Fifth of the Response further states that the "prominent disclaimer" placed on Respondent’s website vitiates any claim of bad faith against it.

As regards element (2) above, the existence of legitimate rights by Complainant in the marks "BOAT TRADER", Respondents buttress their argument that the "BOAT TRADER" marks are generic by citing a treatise entitled McCarthy on Trademarks, section 20:19, for the proposition that "an opposer merely has to ‘assert’ the mark is descriptive, generic or deceptively mis-descriptive in order to shift the burden of persuasion on the Complainant." See Respondent’s motion, paragraph 2 on page 2.

Procedural Order No. 1 of this Panel expressly limited the scope of the Complainant’s Reply to replying to the claim raised in Respondent’s Response that Complainant’s trademarks were so generic nature that they cannot be afforded intellectual property protection.

In its Reply, Complainant cites a line of U.S. court cases and WIPO UDRP decisions to the effect that a challenger to the validity of a registered mark faces a heavy burden of proof to overturn it. Complainant further asserts that on the facts presented, Respondents have not met that burden.

Based on the facts and contentions referenced above, the Panel finds as follows:

a. As regards proof of element (1) above, the confusion element, the Panel agrees that adding a simple prefix such as the letter "a" before a domain name otherwise identical to another’s trademark, does not lessen the possibility of confusion between the domain name and the mark.

The Panel visited Respondent’s and Complainant’s websites in early September, 2001, and found them to be remarkably similar in look and feel. However, this relates more closely to the "bad faith" element than to the confusion element of Complainant’s case. It is necessary to keep in mind that the confusion element for a UDRP case is between a Complainant’s legitimate trademark and a Respondent’s registered domain name – and not between their respective websites. In this case, the Panel finds that the probability of confusion between Respondent’s domain name (<aboattrader.com>) and Complainant’s trademarks ("BOAT TRADER") is very high, especially since both Complainant and Respondent are engaging in the same spheres of activity – advertising of boats for sale and/or exchange.

b. As regards proof of element (2) above, the lack of legitimate interest or rights in the domain name, Respondents have failed to assert any such interest or right of their own, aside from the generic argument. This is evaluated below.

i. Complainant has adequately demonstrated its initial intellectual property rights in the trademark "BOAT TRADER" by commercial usage as required under U.S. trademark law, as well as by registration of two "BOAT TRADER" marks with the U.S. Patent and Trademark Office.

ii. On the issue raised by Respondent of the generic nature of Complainant’s marks, the burden of proof is on Respondent. The valid registration of Complainant’s "BOAT TRADER" marks does create a rebuttable presumption that the marks are distinctive. In addition to the numerous cases cited in Complainant’s Reply, this Panel also directs the parties to WIPO Domain Name case No. D2001-0032 (Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer) in support of this conclusion. Therefore, Respondent has the burden of proof that the marks at issue are generic. These cases also conclude that the quantum of proof is heavy, requiring virtually conclusive evidence of genericness to overturn a valid registration.

iii. Respondents have not met the burden or quantum of proof necessary to win on this point in this case. As indicated in Complainant’s Reply to the Response, at p. 3, none of the websites listed by Respondents in Exhibit C to their Response show genericness of the mark "BOAT TRADER" because none of these websites use "boat trader" in their domain names. Most simply use the descriptive word "boat" alone.

For these reasons, the Panel finds that Complainant does have a legitimate intellectual property interest in the "BOAT TRADER" marks, and the Respondents do not have any such interest.

c. As regards proof of element (3) above, the bad faith element, the Panel has visited the relevant websites of Respondents and Complainant, and finds the look and feel of both to be quite similar. Complainant alleges in its Complaint, Paragraph 12(c)(iii), that its <boattraderonline.com> website has been on the Internet for several years before Respondents set up their own website, which means that Respondents had the opportunity to study and imitate its look and feel, while offering similar services to those of Complainant. Respondents say that they used a common marine marketing Internet template and that they had technical difficulties changing the template to distinguish themselves further from Complainant, but in the end by keeping this template, Respondents did knowingly run the risk of conflict with Complainant.

While it is not possible for this Panel to engage in mind-reading activities to prove existence or lack of bad faith, Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a Respondent:

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

The Panel finds that this situation occurs in the present case. While it is often difficult to prove a Respondent’s actual intent, the Panel may clearly infer such intent by the use of the virtually identical layout of Respondent’s website with that of Complainant. The disclaimer on Respondent’s website that it is not affiliated with Complainant is not very prominent or conspicuous, leading the Panel to the conclusion that it was placed there as a bare necessity. And the fact that the Registrar may have suggested to Respondents the use of any particular domain name does not relieve Respondents of the duty to check and verify that the suggested domain name is valid to use from the trademark perspective.

Based upon the Panel’s Findings in Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel hereby issues an order for the Registrar to transfer the domain name registration to the Complainant.

Paul E. Mason
Sole Panelist

Dated: October 2, 2001