DECISION

Bose Corporation v. Tim Siekawitch

Claim Number:  FA0304000155130

PARTIES

Complainant is Bose Corporation, Framingham, MA, USA (“Complainant”). Respondent is Tim Siekawitch, Regina, SK, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <waveradio.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 18, 2003; the Forum received a hard copy of the Complaint on April 18, 2003.

On April 21, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <waveradio.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@waveradio.com by e-mail.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. However, on April 24, 2003, the Forum did receive an informal submission from Respondent.

On May 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <waveradio.com> domain name is confusingly similar to Complainant’s WAVE mark.

2. Respondent does not have any rights or legitimate interests in the <waveradio.com> domain name.

3. Respondent registered and used the <waveradio.com> domain name in bad faith.

B.  Respondent failed to submit a formal Response in this proceeding.

FINDINGS

Complainant, Bose Corporation, has used the WAVE mark in connection with its WAVE radio since 1993 around the world (including Canada, United States, Europe, Australia, Japan, Mexico, South America and recently Russia, China and India). Since 1984, Complainant has also used the WAVE mark in conjunction with other products including the WAVE/PC Interactive Audio System, the Acoustic WAVE Music System and the Acoustic WAVE Cannon. Complainant operates online primarily from its <bose.com> domain name and corresponding website, where Complainant makes extensive use of the WAVE mark to denote its various acoustic related products.

Complainant obtained a registration in 1991 from the U.S. Patent and Trademark Office for the WAVE mark (Reg. No. 1,633,789). Complainant has numerous international registrations and pending applications for the WAVE trademark. Complainant’s Canadian application for registration of the WAVE mark (App. No. 1,064,085) was filed in June 2000 based on Complainant’s use of the mark in Canada since at least as early as June 21, 1993.

Complainant has invested substantial resources in developing and marketing its products under the WAVE mark. Specifically, Complainant has spent over $100 million in the past three years alone generating consumer awareness through print, radio, Internet and television advertising. As a result of its extensive marketing campaign, Complainant has sold over three million WAVE radios, and has generated millions of dollars in revenue from the sales of products under the WAVE mark.

Respondent, Tim Siekawitch, registered the disputed <waveradio.com> domain name on January 20, 2000. Complainant’s investigation of Respondent’s use of the domain name reveals that <waveradio.com> does not currently resolve to an active website. Prior to receiving Complainant’s cease and desist letter, Respondent’s website, when activated, contained a placeholder that stated, “ARRIVING SOON ALL YOU VE EVER DREAMED INTERNET RADIO TO BE.”

In response to Complainant’s attempts to acquire control of the subject domain name, Respondent offered to sell its rights in the domain name for $175,000, plus $225,000 for “associated intellectual property.”

Respondent is not authorized or licensed by Complainant to make use of the WAVE mark for any purpose or in connection with any online offering.

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."

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the WAVE mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use of the mark in commerce. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <waveradio.com> domain name is confusingly similar to Complainant’s WAVE mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of a generic word that describes Complainant’s product. The addition of “radio,” a generic word that describes the product Complainant’s WAVE mark denotes, does not take the disputed domain name out of the realm of confusing similarity. Additionally, because top-level domains, such as “.com,” are inconsequential under a Policy ¶ 4(a)(i) analysis, Respondent’s domain name is rendered confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (“gTLD”) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to formally contest Complainant’s assertions that, inter alia, Respondent lacks rights and legitimate interests in the <waveradio.com> domain name. Because Complainant’s evidence and arguments are unopposed, the Panel accepts all reasonable inferences made in the Complaint as true unless clearly contradicted by the evidence. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent. Respondent’s failure to formally respond means that Respondent has failed to assert any circumstances that could demonstrate rights or legitimate interests in the domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

The WHOIS information for <waveradio.com> indicates that Respondent registered the domain name on January 20, 2000. Uncontested assertions made by Complainant reveal that Respondent has yet to formulate a use for the domain name, or proffer any legitimate purpose. Because this information is uniquely within the knowledge and control of Respondent, Respondent’s failure to articulate a purpose for <waveradio.com> implies that there is none. Specifically, Respondent’s actions constitute passive holding of an infringing domain name. Therefore, Respondent fails to establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Additionally, Respondent’s willingness to depart with the domain name registration via sale of its rights suggests that it lacks legitimate interests in <waveradio.com>. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

As stated, Respondent is not authorized or licensed to make use of Complainant’s WAVE mark for any purpose, or in connection with any offering of online goods or services. Respondent’s failure to develop a legitimate use for the domain name over the past three years permits the inference that it is not “commonly known by” the domain name or the “waveradio” second-level domain pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).  

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). Specifically, in correspondence with Complainant regarding control of the <waveradio.com> domain name, Respondent suggested that it was interested in selling its rights for an exorbitant sum, approximately $400,000. Thus, circumstances indicate that Respondent registered the domain name primarily for the purpose of selling or transferring the domain name registration to Complainant. Respondent’s failure to develop or articulate a purpose for the domain name reinforces this finding. See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

The fact that Complainant may have initiated the negotiations regarding transfer of the domain name is not determinative in finding that Respondent acted in bad faith. See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted the Respondent to see if it was interested in selling the domain name”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <waveradio.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 3, 2003

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