Boeing gets wwwboeing.com in UDRP

By: RH

Boeing won an obvious UDRP case for the domain wwwboeing.com. The only thing that made me wonder is why they waited so long ? The domain was registered back in 2001. For whatever reason the domain resolved to a parked site showing mostly young girls.

This case was a one panelist decision

.
Respondent

Respondent
failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a United States company that is the
world’s largest manufacturer of jet airliners.

2. Complainant owns rights to the BOEING mark in over 30
countries worldwide, including registrations with the United States Patent and
Trademark Office (“USPTO”) and in Russia, and uses the mark in the promotion of
its airline and aircraft business.

3. Respondent registered the disputed domain name on May
15, 2001.The
domain name is linked to a website which features images of mostly young women,
which in turn link to third party websites.

DISCUSSION

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 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and

(2)
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.

In
view of Respondent's failure to submit a response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complaint to be deemed true); see also Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.”).

Identical
and/or Confusingly Similar

The
first question that arises is whether Complainant has rights in a trademark or
service mark. Complainant claims to own
rights to the BOEING mark in over 30 countries worldwide, including
registrations with the United States Patent and Trademark Office (“USPTO”) and
Russia, and Complainant uses the mark in the promotion of its airline and
aircraft business. See, e.g., U.S. Reg. No. 882,041 registered on
December 9, 1969; and Reg. No. 1,402,994 registered on July 29, 1986.
Complainant argues that these registrations are evidence of Complainant’s
rights in the mark. The Panel finds that registration with the USPTO
establishes Complainant’s rights in the mark, despite the fact Respondent is
located in Russia. See Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is
irrelevant whether the complainant has registered its trademark in the country
of the respondent’s residence). For these reasons, the Panel finds that
Complainant has rights in the BOEING mark under Policy ¶ 4(a)(i).

The
second question that arises is whether the disputed domain name is identical or
confusingly similar to Complainant’s BOEING
mark. Complainant next argues that Respondent’s
<wwwboeing.com> domain name is confusingly similar to the
BOEING mark because it only adds “www” before Complainant’s BOEING mark to
create the domain name. Past panels have found the “www” prefix to create confusing
similarity. The Panel agrees with Complainant’s submissions, and finds that
the addition of “www” adds to the confusing similarity between the domain name
and the BOEING mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat.
Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”). The Panel also notes that the
disputed domain name adds the generic top-level domain (“gTLD”) “.com” to
Complainant’s mark, but the addition of the gTLD does not negate any confusing
similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA
916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”). For these reasons, the Panel finds that
Respondent’s <wwwboeing.com> domain name is confusingly similar to the
BOEING mark pursuant to Policy ¶ 4(a)(i).

Complainant
has thus made out the first of the three elements that it must establish.

Rights or
Legitimate Interests

It
is now well established that Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show
it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc.
v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding
that the complainant must first make a prima facie case that the
respondent lacks rights and legitimate interests in the disputed domain name
under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that
it does have rights or legitimate interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain names.”).

The
Panel finds that Complainant has made out a prima facie case that arises
from the following considerations:

(a)
Respondent has chosen to take Complainant’s BOEING
mark and to use it in its domain name, adding only the letters “www” before
Complainant’s BOEING mark to create the domain name , thus implying that the
domain name is an official domain name of Complainant leading to an official
website of Complainant which it is not;

(b)
Respondent has then used the domain name
to link to a website which features images of mostly young women, which in turn
link to third party websites;

of
Complainant;

(d)
Complainant contends that Respondent has never been commonly known by the
name or nickname of the <wwwboeing.com> domain name. Complainant
notes that the current WHOIS information lists the registrant of record as
“Host for You c/o Vladimir Snezko.” Complainant claims that previous panels
consistently looked to a domain name’s WHOIS records to determine whether the
respondent is commonly known by the domain name. Complainant disavows any
authorization or sponsorship of Respondent. The Panel finds that Complainant’s
showing of evidence, combined with a lack of any other evidence to connect
Respondent with the domain name, proves that Respondent is not commonly known
by the <wwwboeing.com> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark);

(e) Complainant next argues that Respondent’s domain
name resolves to a website featuring images of young women, which in turn link
to a variety of third-party websites, none of which have any connection to
Complainant. Complainant asserts that Respondent’s sole purpose in operating
the website is to derive revenue from misdirected Internet traffic. Complainant
argues that such use is not a legitimate noncommercial fair use, nor a bona
fide offering of goods and services. The Panel notes that the website to
which the <wwwboeing.com> domain name resolves features several
pages of unrelated images with a wide range of unrelated sub-captions. The
Panel finds that Respondent’s use of the <wwwboeing.com> domain
name to resolve to a website of unrelated hyperlinks is neither a bona fide
offering of goods, nor a legitimate noncommercial or fair use of the disputed
domain name. See WeddingChannel.com
Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the Policy). The Panel also finds that the adult-oriented
images and the captions throughout the website illustrate neither a bona
fide offering of goods or services, nor a legitimate noncommercial or fair
use. See Isleworth Land Co. v. Lost In Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of
its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative
poses, did not constitute a connection with a bona fide offering of
goods or services or a noncommercial or fair use). For these reasons, the Panel
finds that Respondent is not using the domain name in furtherance of a Policy ¶
4(c)(i) bona fide offering of goods, or a Policy ¶ 4(c)(iii) legitimate
noncommercial or fair use;

(f) Complainant also asserts that Respondent’s use of a
typosquatted domain name is evidence that Respondent lacks true rights or
legitimate interests in the domain name. The Panel notes that the <wwwboeing.com>
domain name would resolve to Complainant’s own <boeing.com> domain name
if the Internet user typed “www.boeing.com” rather than “wwwboeing.com.” The
Panel therefore finds that this minor alteration Respondent made in formulating
the disputed domain name is typosquatting, and thus Respondent lacks rights and
legitimate interests in the <wwwboeing.com> domain name under
Policy ¶ 4(a)(ii). See Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb.
Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com>
domain name, a typosquatted version of the complainant’s DINERS CLUB mark,
was evidence in and of itself that the respondent lacks rights or legitimate
interests in the disputed domain name vis á vis the complainant).

All
of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut
the prima facie case against it, the Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name.

Complainant
has thus made out the second of the three elements that it must establish.

Registration
and Use in Bad Faith

It
is clear that to establish bad faith for the purposes of the Policy,
Complainant must show that the disputed domain name was registered in bad faith
and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for
establishing bad faith are not exclusive, but that Complainants in UDRP
proceedings may also rely on conduct that is bad faith within the generally
accepted meaning of that expression.

Having
regard to those principles, the Panel finds that the disputed domain name was
registered and used in bad faith. That is so for the following reasons.

First,
Complainant alleges that Respondent has previously registered domain names
which were found by prior UDRP panels to have been registered and used in bad
faith. See, e.g., Mattel, Inc. v. Host for You/Vladimir Snezko,
FA1432364 (Nat. Arb. Forum, May 4, 2012); Expedia Inc. v. Host for You c/o
Vladimir Snezko, FA1191811 (Nat. Arb. Forum, July 7, 2008); Musciains
Friend v. Vladimir Snezko, CPR0217 (CPR Institute of Disputed Resolution,
August 14, 2002). Complainant notes that prior UDRP decisions serve as
evidence of repeated bad faith registrations and use of domain names.
Complainant argues that this supports the conclusion that Respondent has
engaged in a pattern of conduct prohibited by the Policy, which in turn should
support the finding that Respondent’s registered and used the <wwwboeing.com> domain name in bad faith. Previous panels have
found that a respondent’s registration of a confusingly similar domain to
thwart a complainant’s effort to embody their mark in a domain name is proof of
bad faith use and registration. See Stevens v. Modern
Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent
Complainant from reflecting its mark in a corresponding domain name through a
pattern of such conduct evidences bad faith registration and use of a domain
name pursuant to Policy 4(b)(ii).”); see also TRAVELOCITY.COM
LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous
[UDRP] decisions demonstrate a pattern of bad faith registration and use of
domain names under Policy ¶ 4(b)(ii).”). The Panel agrees and finds that Respondent’s history of
bad faith registration shows bad faith use and registration of the <wwwboeing.com> domain name pursuant Policy ¶ 4(b)(ii).

Secondly,
Complainant argues that Respondent has registered the domain name to misdirect
traffic to other websites. The Panel notes that the domain name resolves to a
series of hyperlinks under pictures of young women. The Panel again notes that
the website to which the disputed domain resolves contains adult-oriented
material and/or unrelated hyperlinks. The Panel finds that Respondent’s
efforts to attract confused Internet users into viewing the <wwwboeing.com> domain name constitutes bad faith
use and registration. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that
Internet users would likely be confused as to the source or sponsorship of the
<blackstonewine.com> domain name with the complainant because the
respondent was redirecting Internet users to a website with links unrelated to
the complainant and likely receiving click-through fees in the process); Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (finding that the respondent’s tarnishing use of the disputed domain
names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith). Therefore, the Panel finds
that Respondent intended to attract confuse Internet users for its own
commercial gain pursuant to Policy ¶ 4(b)(iv).

Thirdly, Complainant asserts that Respondent had
knowledge of Complainant’s mark when registering the domain name. Complainant
alleges that its BOEING mark is well known throughout the world, including
Respondent’s country of origin—Russia. Complainant concludes that because of
this it is inconceivable that Respondent did not know of Complainant or its
BOEING mark prior to the registration of the <wwwboeing.com>
domain name. The
Panel here finds that that Respondent had actual knowledge of Complainant's
rights in the mark prior to registering the disputed domain name and that such actual
knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See
Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16,
2007) (rejecting the respondent's contention that it did not register the
disputed domain name in bad faith since the panel found that the respondent had
knowledge of the complainant's rights in the UNIVISION mark when registering
the disputed domain name).

Fourthly,
Complainant asserts that Respondent’s typosquatting behavior shows bad faith in
both the registration and use of the domain name. The Panel notes that the
disputed domain name would resolve to Complainant’s <boeing.com> with the
addition of a period between “www” and “boeing” in the disputed domain name.
Previous panels have found that taking advantage of such a minor and common
typographical error indicated the bad faith use and registration by a
respondent. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb.
Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was
registered to “ensnare those individuals who forget to type the period after
the ‘www’ portion of [a] web-address,” which was evidence that the domain name
was registered and used in bad faith. For these reasons, the Panel finds bad
faith use and registration under Policy ¶ 4(a)(iii).

Fifthly,
in addition and having regard to the totality of the evidence, the Panel finds
that, in view of Respondent’s registration of the disputed domain name using
the BOEING mark and in view of the conduct that Respondent engaged in when
using it, Respondent registered and used the disputed domain name in bad faith
within the generally accepted meaning of that expression.

Complainant
has thus made out the third of the three elements that it must establish.