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and Mediation Center
American Border Collie Association, Inc. v. Richard Swafford
Case No. D2006-0113
1. The Parties
The Complainant is American Border Collie Association, Inc., Perkinston, Mississippi, United States of America, represented by White, Redway & Brown, LLP, United States of America.
The Respondent is Richard Swafford, Portland, Tennessee, United States of America.
2. The Domain Name and Registrar
The disputed domain name <abcbordercollies.com> (the “Domain Name”)
is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2006. On January 26, 2006, the Center transmitted by e-mail to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On February 5, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 7, 2006. The Center verified that the Complaint together with the amendment thereto 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 Respondent of the Complaint, and the proceedings commenced on February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.
The Center appointed Robert A. Badgley as the sole
panelist in this matter on March 10, 2006. 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 following sets forth factual assertions by Complainant which are plausible, undisputed by Respondent, and in some instances supported by documentary support in the record. Incorporated in 1983, Complainant is the principal registry association in the United States for Border Collie dogs. Complainant’s business, including the maintenance of registry services, includes the promotion of breeding and training Border Collies.
Complainant does not claim to have registered any trademark. However, Complainant has used the mark “ABC” since Complainant’s incorporation as an identifier of its services. More than 250,000 dogs have been registered with Complainant, and annexes to the Complaint demonstrate widespread recognition of “ABC” as the source of Border Collie registration and attendant services among those interested in dog breeding.
Respondent is a dog breeder and seller doing business under the name Swafford’s Border Collies. As early as 1997, Respondent availed himself of Complainant’s services by registering one of his own dogs with ABC.
Respondent registered the Domain Name on June 16, 2002, long after Complainant’s first use of its “ABC” marks and several after Respondent had become aware of Complainant’s services under the “ABC” marks. In December 2003, Complainant responded to various consumer complaints about Respondent by investigating Respondent. In September 2004, Complainant expelled Respondent from membership with ABC, thus revoking his dog registration privileges. Around that time, Complainant discovered Respondent’s ownership and use of the Domain Name, and sent Respondent a letter demanding that he remove any materials from his website that might engender the false impression that Respondent was somehow affiliated with or sponsored by Complainant.
In March 2005, Complainant demanded by letter that
Respondent surrender the Domain Name to Complainant. That demand was never answered.
5. Parties’ Contentions
Complainant’s factual contentions are summarized in Section 4 above.
Respondent did not submit a timely response to Complainant’s contentions, and was declared in default on March 6, 2006. On March 7, 2006, however, Respondent sent the Center an e-mail, the entirety of which is set forth verbatim below:
“I have had this domain name for over 3 years and I do not want to give it up; According to my provider (where i purchased the rights to “www.abcbordercollies.com”) I do not have anything to worry about anyone taking it away from me. I have a border collie business and this is how people relate to me and get in contact with my kennel and are able to see the photos and etc of the dogs. This has nothing to do with the American Border Collie Association. I chose this domain name because it is one of the first ones that comes up when people want border collies. (common sense, right?).
This should be the last and only time i have to reply to something that has no legal bearing on my domain name that is paid for and secured by I-Power Web, Your office can contact them at # 1-888-511-4678 to confirm this is my paid domain name.
ABCBORDERCOLLIES.COM IS MY DOMAIN NAME AND THE ONLY
ONE THAT I CAN BE IN DEFAULT WITH IS I-POWER WEB.”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established common law rights in the mark “ABC” through use of that abbreviation for more than 20 years. As has been demonstrated by the annexes to the Complaint, Complainant has used that mark to identify and distinguish its services in connection with the registration of Border Collie breed dogs and attendant services. The annexes further demonstrate considerable third-party recognition of Complainant as the source of such services. The Panel is satisfied that Complainant has established that, through use in commerce, Complainant has unregistered rights in the mark “ABC.”
The Domain Name is confusingly similar to the mark “ABC.” The Domain Name merely adds to the “ABC” mark the words “Border Collies,” which addition reinforces the association between that mark and the Domain Name, and hence tends to aggravate consumer confusion.
In sum, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights
or legitimate interests” issue (as it does for all three elements of the
Policy). See Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122 (March 26, 2001).
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.
Complainant never authorized Respondent to register or use its mark in the Domain Name. While a dog breeder and seller would be justified in registering and using a domain name comprised of a particular breed of dog, such as a Border Collie, that justification generally does not extend to registering and using a domain name containing a commercial service mark identifying a private business’ dog pedigree registration services. This is particularly true where, as here, the mark in question is shown to be well-known within the relevant field of commerce.
Notwithstanding Respondent’s explanation of why he chose the Domain Name, it is undisputed that Respondent was aware of Complainant’s mark and the business conducted under that mark. Respondent’s failure to challenge any of the assertions in the Complaint regarding his awareness of Complainant’s mark merely confirms his awareness.
In sum, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular, but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
With respect to the element of “bad faith” registration of the Domain Name, the Panel finds it clear that Respondent had Complainant’s mark in mind when registering the Domain Name. Complainant had actually used the registration services of Complainant prior to registering the Domain Name, and Complainant’s business is related to dog breeding.
Having found that Respondent had Complainant’s mark in mind when he registered the Domain Name, it is but a short step to find “bad faith” under the Policy. Given the undisputed evidence, and the reasonable inferences one may draw from that evidence, that it is desirable for breeders and sellers of Border Collies to have the endorsement (through registration) of Complainant, it appears quite plain that Respondent has sought to siphon business from others by the appropriation of Complainant’s mark in the Domain Name.
The Panel concludes that Complainant registered and
has used the Domain Name in order to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with Complainant’s
marks, in violation of Policy paragraph 4(b)(iv). Accordingly, the Panel finds
that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <abcbordercollies.com> be transferred to Complainant.
Robert A. Badgley
Dated: March 15, 2006