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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Worldblackbelt, Inc. v. Master Rio Altaie

Case No. D2006-0867

 

1. The Parties

The Complainant is Worldblackbelt, Inc., United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.

The Respondent is Master Rio Altaie, Dubai, United Arab Emirates.

 

2. The Domain Name and Registrar

The disputed domain name <blackbeltscenter.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2006. On July 10, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On July 10, 2006, Wild West Domains, Inc. 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 July 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2006.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on August 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

A. Complainant

The Complainant promotes on its website “www.worldblackbelt.com” martial arts by providing a directory of martial art schools and offering for sale goods related to martial arts, particularly nutritional supplements for use by athletes. It is the proprietor of the following trademark registration:

WORLD BLACK BELT wordmark, US registration No. 2 729 778, registered on June 24, 2003, for nutritional and dietary supplements, vitamin preparations, nutrients and tonics, mineral preparations, energy replacement preparations, all being nutritional supplements for use by athletes (class 5 of the international classification).

On May 24, 2006, the Complainant sent a cease and desist letter to the Respondent, demanding that the Respondent cease to use the domain name in dispute.

B. Respondent

The Respondent registered on January 10, 2005, the domain name <blackbeltscenter.com> and uses it for a website on which, amongst others, it offers under the names “World Black Belts United Federation” and “World Black Belts Center” martial arts lessons by providing a link to programs of instruction.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Respondent has pluralized the Complainant’s trademark and has replaced the prefix “world” by the suffix “center”. It therefore submits that (A) the domain name <blackbeltscenter.com> is confusingly similar to its trademark BLACK BELT in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s cease and desist letter and has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name of the Respondent is not identical to the trademark WORLD BLACK BELT of the Complainant, but it incorporates the part BLACK BELT of the mark, which is distinctive for the goods for which the trademark is registered, with the slight difference that the plural “s” is added, a fact that will easily be overlooked by Internet visitors. This part of the domain name is followed by the descriptive term “center”. Considering that the omitted prefix “world” is as descriptive as the added suffix “center”, the virtual identity of the distinctive part “blackbelts” of the Respondent’s domain name with the distinctive part BLACK BELT of the Complainant’s trademark will in view of the identical meaning of the two terms result into a likelihood of confusion of Internet users. This is the more likely as at the Respondent’s website, to which the domain name <blackbeltscenter.com> leads, a World Black Belts United Federation is (or at least was) referred to, and under “contact” the name of the “World Black Belts Center” is prominently shown together with a map showing where the center is located. These facts are evidenced by copies of the respective pages of the Respondent’s website. Visitors of this website who know the Complainant’s trademark will therefore be confused about the origin of the goods and services offered on it, the more as both websites refer to martial arts and some of the goods and services are similar to those offered by the Complainant on its website.

For all these reasons the Panel considers that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

(1) The term “black belts” refers to a belt or belts which a master of martial arts may bear as a distinction of his profession. The Respondent may therefore well have an interest in using the domain name <blackbeltscenter.com> for a website in which a martial arts center is offering its services. Under the Policy this interest must be a legitimate interest. Such legitimate interest is according to paragraph 4(c)(i) of the Policy demonstrated by use of the domain name in connection with a bona fide offering of goods or services.

The Panel considers that the Respondent does not use the domain name in connection with a bona fide offering of goods or services, for the following reasons:

(i) The trademark WORLD BLACK BELT is used by the Complainant for nutritional supplements for use by athletes and is registered for these goods in the United States. Despite its descriptive meaning in the context of the use by the Respondent, the trademark WORLD BLACK BELT is no doubt distinctive for the goods for which it is registered.

(ii) The Panel agrees with the submission of the Complainant that the Respondent knew the trademark WORLD BLACK BELT of the Complainant when he registered the domain name <blackbeltscenter.com>. On October 18, 2004, a decision was handed down in WIPO Case No. D2004-0708 in which the domain name <worldblackbelts.com> was ordered to be transferred to the Complainant. The Respondent in that case (Mr. Mazar Ali Chawla, American Systems USA, Inc) was located at the same address as the Respondent in the present case (Dubai, United Arab Emirates; apparently the address of the so called World Black Belts Center, referred to on the Respondent’s website); the domain name was registered with the same Registrar; and the same registration information was given as in the present case.

Failing any statement of the Respondent the Panel agrees with the conclusion of the Complainant that there is a connection between the Respondent in the present case and the respondent in the case WIPO Case No. D2004-0708; as a consequence the Respondent had knowledge of the case referred to when he registered the domain name in dispute.

(iii) Not only being aware of the trademark WORLD BLACK BELT of the Complainant but also of the fact that the domain name <worldblackbelts.com> was considered to have been registered and used in bad faith and was transferred to the Complainant, the Respondent registered the similar domain name <blackbeltscenter.com>. In that context a general rule of unfair competition law must be considered, according to which a person, who committed an act of unfair competition by using another person’s name or trademark, has to keep a clear distance to that term when choosing a new name to be used instead of the infringing name or mark. Even if the Respondent is not identical to the respondent in the case referred to, in view of the apparent relationship between the parties, who both are connected to the World Black Belts Center, the Respondent’s registration and use of a domain name that is confusingly similar to the trademark of the Complainant, must be considered to be a breach of that rule. This is an important indication that the use of the Respondent cannot be considered to be bona fide.

(iv) The Respondent uses the domain name for a website, that under the name “World Black Belts United Federation” offers or at least offered – as evidenced by the Complainant – martial arts lessons by providing a link to programs of instruction. It also provides a link to a contact page on which the “World Black Belts Center” is referred to and a map is showing how to reach the center in Dubai. Whilst the Respondent, when choosing his domain name, omitted the word “World” of the Complainant’s trademark WORLD BLACK BELT, he uses that trademark entirely as part of the “World Black Belts Center”. This is an additional indication that the Respondent’s use cannot be considered to be a bona fide offering of goods or services.

(v) The Respondent failed to submit any argument that would show that despite these convincing facts his use should be considered to be bona fide. In conclusion the Panel is therefore satisfied that the use of the domain name <blackbeltscenter.com> of the Respondent cannot be considered to be bona fide.

(2) Furthermore, none of the other circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given.

(i) The Respondent has apparently not acquired any rights of its own in a trademark BLACKBELTSCENTER. Otherwise the Respondent would no doubt have replied to the Complainant’s cease and desist letter or at least he would have responded to the Complaint.

(ii) Taking into account the contents of the website linked to the domain name, the Panel is also satisfied that the use made by the Respondent is not a non-commercial or fair use without intent for commercial gain. On the contrary, in view of the Respondent’s repeated prominent inclusion on its website of the Complainant’s trademark WORLD BLACK BELT the Panel considers this use to be for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel also agrees with the assumption of the Complainant that the Respondent has not been commonly known under the domain name, which was registered in 2005 only. In this connection the Panel notes that on the website, to which the domain name leads, this domain name is not mentioned at all. On the contrary, the term “World Black Belts Center” is prominently shown under “contact”. The Respondent has failed to submit any facts or evidence for any other use of the domain name which could have made him commonly known under the domain name.

(iii) Finally the Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name.

For all these reasons the Panel concludes that the Respondent has not rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Even if the Respondent did not submit a response, the Complainant must prove that the Complainant registered and is using the domain name in bad faith.

For the reasons given above B 1(i)-(iii) the Panel is satisfied that the Respondent registered the domain name <blackbeltscenter.com> in bad faith. The Respondent clearly did not keep the necessary distance to the Complainant’s trademark when he registered his domain name, to be considered confusingly similar to that trademark.

On the website linked to the domain name the Respondent uses prominently the term “World Black Belts Center” that includes the Complainant’s trademark WORLD BLACK BELT in its entirety, as discussed in more detail above B 1(iv). This is an important indication that the Respondent also uses the domain name in bad faith.

Paragraph 4(b)(iv) of the Policy lists as evidence of registration and use in bad faith the circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Complainant has submitted facts and evidence that the Respondent has also fulfilled the conditions set out in paragraph 4(b)(iv) of the Policy. When typing the Respondent’s domain name, which is confusingly similar to the Complainant’s trademark WORLD BLACK BELT, Internet users will expect to arrive at a website of the Complainant or at least a website somehow related to the Complainant. The Respondent uses the domain name for a website, that under the name “World Black Belts United Federation” offers or at least offered martial arts lessons by providing a link to programs of instruction. He also provides a link to a contact page on which the “World Black Belts Center” is referred to and a map is showing how to reach the center in Dubai. With this behavior the Respondent attempts to attract Internet users for commercial gain to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. It will be difficult for the users to realize that this center, bearing a name that is practically identical to the Complainant’s trademark and the name of the Complainant’s website is not related to the Complainant. A further element, adding to the visitor’s confusion, is that the Respondent has included in a picture gallery a link to the Complainant’s principal Bob Wall, as evidenced by a copy of the respective webpage.

Even where Internet users, when they view the Respondent’s web page in more detail, realize that it is not connected with the Complainant, the Respondent may still profit from their initial confusion, since they may become interested in the Respondent’s World Black Belts Center and may be tempted to try the link to programs of instruction. This will be to the detriment of the Complainant who provides a directory of Martial Arts Studios which provides martial arts lessons but also offers goods related to martial arts.

In conclusion, the Panel finds that the Respondent has registered and is using the domain name in bad faith.

 

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, <blackbeltscenter.com> be transferred to the Complainant.


Gerd F. Kunze
Sole Panelist

Dated: September 6, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0867.html

 

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