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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ox Ideas, Inc. v. Wan-Fu China, Ltd.

Case No. D2007-0400

 

1. The Parties

The Complainant is Ox Ideas, Inc., Miami, Florida, United States of America, represented by Weston, Garrou, Dewitt & Walters, United States of America.

The Respondent is Wan-Fu China, Ltd., Nassau, of Bahamas.

2. The Domain Names and Registrars

The disputed domain names

<bangbusters.com>

<ibangbus.com>

<www-bangbros.com>

<xxxbangbus.com>

are respectively registered with

Capitoldomains, LLC

DomainDoorman, LLC

BelgiumDomains, LLC

DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2007. On March 19, 2007, the Center transmitted by email to Capitoldomains, LLC, DomainDoorman, LLC, BelgiumDomains, LLC a request for registrar verification in connection with the respective domain names at issue.

On March 19, 2007, Capitoldomains, LLC, DomainDoorman, LLC, and BelgiumDomains, LLC, transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 19, 2007. The Center verified that the Complaint together with the amendment to 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 April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2007.

The Center appointed Ross Carson as the sole panelist in this matter on May 22, 2007. 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

Complainant is the owner of United States of America Reg. No. 2,810,145 for the trademark BANGBUS registered for entertainment services, namely providing adult entertainment photography and motion picture films on-line, registered on February 3, 2004. Complainant is also the owner of United States of America Reg. No. 2,923,488 for the trademark BANGBROS registered for entertainment services, namely providing images graphics, video, photographs and text in the field of adult entertainment via a global computer network, registered on February 1, 2005. Complainant also holds trademark rights to the trademark BANGBUS in international class 41 in the Benelux countries through international registration number 0894576. Complainant also holds trademark rights to the trademark BANGBUS in international class 41 in Australia and the European Union through international registration 907006. Complainant additionally holds trademark rights to the trademark BANGBROS in international class 41 in the Benelux countries through international registration number 905404. Complainant is the owner of trademark rights in the trademark BANGBROS in international class 41 in the European Union through international registration 905404.

 

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the substance of the Respondent’s domain names and the substance of the Complainant’s trademarks are identical, except for the addition in the Respondent’s domain names of generic terms, punctuation marks, or obvious typographical error variations in the Complainant’s trademarks. This is a distinction without a difference. It is a difference of such minor importance that it can not dispel the confusing similarity between the Complainant’s trademarks and the infringing domains, a similarity the Respondent seeks to exploit for commercial gain.

Adding a word to Complainant’s trademark should not preclude a finding of confusing similarity and thus, infringement. Confusing similarity is even more glaring evidence of bad faith where the word added relates to Complainant’s business. See Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd., FA 141825 (Nat. Arb. Forum Feb. 26, 2003) (chemyahoo.com and others – “it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark”); Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367 (<experianautomotive.com> - addition of the generic term, “automotive”, does not distinguish Respondent’s domain name from Complainant’s mark because the domain contains Complainant’s EXPERIAN mark in its entirety); Broadcom Corporation v. Danny Juwon Lee, FA98071 (Nat. Arb. Forum Aug. 21, 2001) (<antibroadcom.com>). In fact, adding a word related to Complainant’s business amplifies the offense. See Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, FA129123 (Nat. Arb. Forum Jan. 2, 2003) (<thriftyairportparking.com> - finding confusing similarity with the THRIFTY marks, particularly since those additions have connotations that relate to Complainant’s business services); Foot Locker, Inc. v. Blezin Widmaer, FA113283 (Nat. Arb. Forum June 17, 2002) (<champs-sports.com> and others – “The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant’s business”).

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that there are no facts that could bring a reasonable person to the conclusion that Respondent has any rights or legitimate interests in the domain names at issue. Complainant’s marks are wholly contained within the Respondent’s domain names, and thus the Panel should infer that the Respondent had actual knowledge of Complainant’s marks.

Complainant further submits Respondent is not a licensee of Complainant, nor does the Respondent otherwise hold any authorization to use the Complainant’s marks.

The domain <xxxbangbus.com> makes it abundantly clear that the Respondent knew of Complainant, its goods, its marks, and its services, since the content offered through Complainant’s services is of an “xxx” or “adult” nature.

Respondent’s disputed domain names mostly resolve to pay-per-click websites that directly compete with the Complainant’s state and federal trademark rights. Respondent has made no good faith or legitimate use of the domain names.

Respondent has selected the domain names to intentionally attempt to attract, for commercial gain, Internet users to the pay-per-click websites hosted at these domains by creating a likelihood of confusion with the Complainant’s marks and the Complainant’s URLs as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website locations or of the products or services on the Respondent’s websites or locations.

Complainant submits that previous panels have found that a respondent cannot claim to have rights or legitimate interests in a domain name where respondent has notice that its domain is confusingly similar to a complainant’s mark or where respondent registered or used the domain name in bad faith. Respondent can not seriously contend that it selected these particular domain names and added the descriptive terms selected, with no knowledge of the Complainant’s marks.

A.3 Registered and Used in Bad Faith

Complainant submits that the disputed domain names incorporate the Complainant’s trademark and Respondent is taking advantage of Internet users who mistype domain names when they try to access the Complainant’s website, or who mis-identify the source or sponsorship of the Respondents’ sites. Complainant presumes that the Respondent receives click-through fees in exchange for diverting Internet users to other websites, including those of the Complainant’s competitors. Because the Respondent’s domain names include the Complainant’s trademark, Internet users may mistakenly believe that the resulting websites are affiliated with the Complainant. Use of the domain names to take advantage of such confusion, constitutes bad

faith registration and use under Policy paragraph 4(b)(iv).

Complainant further submits that the disputed domain names incorporate the Complainant’s trademark and thus the Panel should find that the Respondent is taking advantage of Internet users who mistype the domain names in dispute when they try to access the Complainant’s websites or who may be searching for Complainant’s websites. Respondent’s registration of the disputed domain names <ibangbus.com>, and <www-bangbros.com>, amounts to typosquatting, which is further evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See National Ass’n of Professional Baseball League, Inc. v. Zuccarini, WIPO Case No. D2002-1011, (“typosquatting…is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from it’s intended destination, by preying on inter-nauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”)

Complainant submits that Respondent is a well-known cybersquatter and has been found as such by at least two panels in the recent past. Wan-Fu China appears to use the same three registrars, located at the same one address, as part of its “domain tasting and cybersquatting” enterprise. The fact that the Respondent appears to engage in this type of conduct with great regularity should strongly tip the scales in favor of a finding of bad faith. See, e.g., Confйdйration Nationale du Crйdit Mutuel v. Wan-Fu China Ltd, WIPO Case No. D2006-1635; Popular Enterprises, LLC v. Wan-Fu China, Ltd., FA 8927424 (Nat. Arb. Forum); Sico Incorporated v. Wan-Fu China, Ltd., FA 886447 (Nat. Arb. Forum).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.

The Complainant has established that it is registered as the owner of trademark registrations in a number of countries for trademarks for BANGBUS and BANGBROS registered in relation to online adult entertainment services. Complainants trademarks have been in continuous use on the Internet commencing in 2001 and 2002 respectively. The particulars of some of Complainant’s trademark registrations are set out in paragraph 4 above.

The domain names <ibangbus.com>; <xxxbangbus.com>; and <bangbusters.com> each incorporate Complainant’s registered trademark BANGBUS in combination with descriptive terms “xxx” and “.com”. The domain name <www-bangbros.com> incorporates Complainant’s registered trademark BANGBROS in combination with the descriptive terms “www” and “.com”. The slight difference between the domain names in dispute and Complainant’s registered trademarks has no legal significance for purposes of determining whether the domain name is identical or confusingly similar to Complainant’s respective registered trademarks. A finding of confusing similarity is further supported when the descriptive words “www” and “xxx” used by Respondent in association with Complainant’s registered trademarks describe the online and adult aspect of services provided by Complainant in association with its registered trademarks. See Yahoo! Inc. v. Hangzhou Hi2000 Info Teck Co, Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd., “it is well- established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark”. The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).

The domain names in dispute incorporating one or the other of Complainant’s registered trademarks in combination with the descriptive words are confusingly similar with Complainant’s registered trademarks.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has not used the trademarks BANGBUS or BANGBROS in association with any goods or services offered by Respondent.

The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.

The domain names in dispute are used by Respondent for websites that include sponsored links promoting products offered by competitors of Complainant. The use of the domain names in dispute to promote competitors products is not a legitimate use of the domain names.

Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain names in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.

The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain names in dispute.

C. Registered and Used in Bad Faith

Having regard to Complainant’s registered trademarks in a number of countries and use of its trademarks online commencing in 2001 and 2002, Respondent must have been well aware of the goodwill associated with Complainant’s trademarks when Respondent registered and began using the domain names in dispute in association with a website promoting access to goods and services competing with Complainant’s services. The fact that the domain names in dispute are comprised of Complainant’s trademarks in combination with descriptive terms relating to the services for which Complainant’s trademarks are registered supports the conclusion that Respondent registered the domain names in dispute with full knowledge of Complainant’s trademarks.

The domain names in dispute are used by Respondent for websites that include sponsored links to products offered by competitors of Complainant. Respondent receives pay for clickthrough payments for hits on the website associated with the domain names in dispute.

Respondent knowingly uses the domain names in dispute to intentionally attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s registered marks as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Lily ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729.

Respondent has engaged in a pattern of bad faith registering of domain names incorporating terms in which it has no legitimate rights. See, e.g. Confйdйration Nationale du Crйdit Mutuel v. Wan-Fu China Ltd, WIPO Case No. D2006-1635; Popular Enterprises, LLC v. Wan-Fu China, Ltd., FA 8927424 (Nat. Arb. Forum); Sico Incorporated v. Wan-Fu China, Ltd., FA 886447 (Nat. Arb. Forum).

The Panel finds that Complainant has proven that Respondent registered and used the domain names in dispute in bad faith as setout in paragraph 4(b)(iv) 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 names, <ibangbus.com>; <www-bangbros.com>; <xxxbangbus.com> and <bangbusters.com> be transferred to the Complainant.

---

Ross Carson
Sole Panelist

Dated: June 3, 2007