DECISION

Dr Boy GMBh v. iDomains

Claim Number: FA0304000154646

PARTIES

Complainant is Dr Boy GMBh, Fernthal, Germany (“Complainant”) represented by Stephen R. Foreht, of Foreht Last Landau & Katz LLP.  Respondent is iDomains, Liverpool, GB (“Respondent”) represented by Philip Kreil.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <boy.com>, registered with BulkRegister.com.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

P. Jay Hines, Chair, Diane Cabell and Honorable Ralph Yachnin (Ret.), Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 16, 2003; the Forum received a hard copy of the Complaint on April 21, 2003.

On April 21, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <boy.com> is registered with Network Solutions, Inc. and that the 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 May 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 27, 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@boy.com by e-mail.

A timely Response was received and determined to be complete on May 21, 2003.

Complainant’s Additional Submission was received on June 2, 2003, after the deadline for Additional Submissions had expired, and therefore does not comply with Forum Supplemental Rule #7.  On June 6, 2003, Respondent requested an interim order regarding inclusion of Complainant’s additional submission, to which Complainant objected on the same day.  On June 9, 2003, Respondent submitted a reply to Complainant’s additional submission which also does not comply with Forum Supplemental Rule #7.  The Panel chose to consider both Additional Submissions in its analysis of the present dispute.

On June 9, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed P. Jay Hines, Diane Cabell and Honorable Ralph Yachnin (Ret.) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims ownership of U.S. Registration No. 1,027,026 for the mark BOY & Design for “injection molding machines and parts thereof.”  The registration issued on December 9, 1975, with a claim of use in commerce of July 1969. 

Complainant asserts that it is a well-established corporation conducting business nationally and internationally under the names Dr. Boy GmbH and Boy Machines, Inc.  Complainant owns and maintains the domain names <boymachines.com>, <boymachine.com> and <dr-boy.de> and also permits use of <drboy.com> by an outside company selling Complainants products. 

Complainant alleges that Respondent’s use of the <boy.com> domain infringes Complainant’s rights in its name and mark and has led to numerous instances of customer confusion.  Further, the adult content of Respondent’s web site is injurious to Complainant’s name and reputation, and does not amount to a “bona fide” offering of goods and services.

Complainant alleges that the redirection of traffic from <dr.boy.com> to Respondent’s <boy.com> website impedes Complainant’s ability to effectively reflect its mark in a corresponding domain name.  The redirection offends Complainant’s customers who attempt to access Boy Machines and Dr. Boy over the Internet and dilutes the value of Complainant’s name and mark by tarnishment.

Complainant alleges that Respondent should have conducted a search among the records of the U.S. Patent and Trademark Office which would have disclosed Complainant’s registered mark BOY & Design.  In registering the <boy.com> domain name, Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s mark, name and websites. 

B. Respondent

Respondent claims that it had never heard of Complainant or its mark until receipt of the Complaint.  Respondent refers to the dictionary definitions of the term “boy” and indicates that he has in the past registered and acquired a limited number of “generic” domains with adult industry associations and connotations, such as <sexylesbians.com> and <popstars.com>.  Respondent asserts that the policy does not preclude a party from registering a common word domain name.

Respondent claims that Complainant does not have exclusive rights to the word “boy,” demonstrating that the term “boy” appears in millions of web pages, over 1000 active U.S. trademark records, and in over 13,000 business names in the United State alone. 

           

Respondent claims that dating back to 1999, he licensed the domain name <boy.com> from the previous Registrant for the purposes of redirecting traffic to third party adult entertainment web sites or providing various links to adult entertainment web sites from which he derived revenue.  After acquiring the domain name in August 2001, Respondent initially redirected traffic to third party adult entertainment web sites and around February 2002 entered into a business arrangement with a third party in the Netherlands in order to develop the domain into an adult entertainment web site itself.  Respondent cites Etam v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) for the proposition that the redirecting of traffic to an adult entertainment website is a bona fide offering of goods or services under the Policy.

Among several other prior UDRP Decisions noted by Respondent, he references Shirmax Retail Ltd. v. CES Marketing Group Inc., (eResolution March 20, 2000), pertaining to the domain name <thyme.com>, for the proposition that “where the dominant name and trademark in question are generic – and in particular where they comprise no more than a single, short common word – the rights/interest inquiry is more likely to favor the domain name owner.”  The current website, after significant investment, was launched in or around June 2002.  Respondent relies on Porto Chico Stores v. Otavio Zambon, D2000-1270 (WIPO November 15, 2000), pertaining to the domain <lovelygirls.com>, for the proposition that there is nothing illegitimate about offering pornography on a website. 

Respondent also contends that the mere ownership of a common word domain should, of itself, establish rights and legitimate interests.  He relies upon, among others, Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001), in which the domain name Registrant asserted that it was making fair use of generic terms in the domain <yourenergysource.com>.  He also relies on Car Toys Inc. v. Informa Unlimited Inc., FA 93682 (Nat. Arb. Forum March 20, 2000), in which Respondent was in the business of acquiring domain names for common words for development and sale, including <cartoys.net>.

Respondent states that there is no evidence that it registered or used the <boy.com> domain name under any of the bad faith circumstances set out in paragraphs 4(b)(i)-(iv) of the Policy.  For example, there is no evidence that it did so to intentionally attempt to attract for financial gain internet users to its site by creating a likelihood of confusion with Complainant’s BOY mark.   Respondent relies on Drew Bernstein v. Action Advertising, D2000-0706 (WIPO Sept. 28, 2000), pertaining to the domain name <lipsservice.com>, for the proposition that common English phrases are susceptible to more than one meaning or connotation, which can be used in many commercial contexts, and that one of those connotations is apt for the adult entertainment purposes engaged in by Respondent. 

With respect to the alleged use of the domain name <dr.boy.com>, Respondent explains that it employs a “wild card” DNS setting such that any term typed in the third-level of any of Respondent’s developed domain names will resolve to the same site as the base domain name.  Respondent asserts that he has not targeted Complainant in any respect because any term typed in at the third-level will resolve to the base domain name.  Respondent relies on two prior cases purportedly holding that employing wild card DNS settings does not constitute bad faith registration and use:  Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA 98813 (Nat. Arb. Forum Oct. 8, 2001) and PwC Business Trust v. Ultimate Search, D2002-0087 (WIPO May 22, 2002).

With respect to Respondent’s failure to conduct a search among the records of the U.S. Patent and Trademark Office prior to registration, Respondent asserts that numerous panels have held that this is not evidence of bad faith, particularly before registering or acquiring a generic or descriptive domain name. 

C. Complainant’s Additional Submission

Complainant claims that Respondent has failed to show with supporting proof any bona fide offering of goods or services in that he has offered no proof of his business arrangements and activities other than self-serving statements. 

Complainant alleges that Respondent’s claimed descriptive use of the term “boy” prevents Respondent from claiming that he has been commonly known by the domain name pursuant to Paragraph 4(c)(ii) of the Policy.  Further, Complainant alleges that the claim of fair use of a descriptive term pursuant to Paragraph 4(c)(iii) of the Policy fails because the subject domain name infringes upon Complainant’s registered trade name.  While there are numerous other domain names comprising, in part, the term “boy,” only Respondent’s domain is confusingly similar to Complainant’s mark. 

Complainant alleges that Respondent’s explanation of his “wild card” DNS settings is an admission that he attempts to redirect traffic from other web sites.  Complainant points to Von Eric Lerner Kalaydjian v. Simon Steinle, FA 114371 (Nat. Arb. Forum July 17, 2002), a case where a third level domain was considered and found to be confusingly similar to the registered mark SEX.SHOP.

D. Respondent’s Additional Submission

Respondent reasserts that Complainant has failed to prove bad faith registration and use, but argues that the panel need not reach the issue of bad faith since Respondent has demonstrated its rights and legitimate interests in a common, short, generic English word.  Respondent refers to cases dealing with the terms “cream” and “donna”:  Cream Holdings Ltd. v. National Internet Source, Inc., D2001-0964 (WIPO Sept. 28, 2001) and Rusconi Editore S.p.A. v. FreeView Publishing Inc., D2001-0875 (WIPO Oct. 10, 2001). 

Respondent seeks to clarify certain segments of the background of its activities and to distinguish the cases relied upon by the Complainant.  For example, with respect to the list of domain names and adult web sites incorporating the word “boy,” Respondent states that it provided the list in order to prove that the term enjoys substantial third party use within the adult field, thereby supporting Respondent’s proposition and reasoning as to why he chose to register the domain name at issue for an adult entertainment website, consistent with the dictionary definition of “an immature or inexperienced man, especially a young man.” 

With respect to third level domain names, Respondent points to the May 1, 2003 letter from the National Arbitration Forum, stating that “[T]he Forum does not have the authority to dispute a third-level domain name.”  Respondent seeks to distinguish the Von Eric Lerner Kalaydjian case on grounds that the discussion was directed to paragraph 4(a)(i) of the Policy and Respondent “does not deny that the domain name at issue is virtually identical to Complainant’s mark; merely that it does not have exclusive use or rights to the word boy.”  Respondent argues that the fact that the character string “dr” resolves to the base domain along with any other character string is not evidence that Respondent has heard of Complainant or was targeting Complainant in order to redirect web site traffic.  Respondent argues that, due to the differences in the respective goods and services, there can be no confusion.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

Identical and/or Confusingly Similar

Since Complainant’s registered mark is BOY & Design, the Panel does not believe that the claimed mark and the domain name are identical.  Because Complainant has not offered evidence of common law use of the word mark BOY alone, the Panel has some question on the issue of confusing similarity.  However, as Respondent concedes “that the domain name is virtually identical to Complainant’s BOY registered trademark,” the Panel makes no finding with respect to Paragraph 4(a)(i) of the Policy.

The Panel notes that the registered mark appears to be arbitrary and distinctive in relation to Complainant’s goods.  However, the Panel also notes that it is not its role to judge the strength of Complainant’s rights, which is properly left to the courts.  Pet Warehouse v. Pets.com, Inc., D2000-0105 (WIPO April 13, 2000); TPI Holding Inc. v. JB Designs, D2000-0216 (WIPO May 22, 2000).

Rights or Legitimate Interests

The Panel finds that Respondent has demonstrated rights to, and legitimate interests in, the domain name under Paragraph 4(c)(i) of the Policy.  Complainant does not contest that Respondent registered the domain name in August 2001 and that it has been used both for redirecting traffic to adult entertainment websites and, for some time before the bringing of the dispute, as an adult website itself.  The panel would not characterize the subject domain name as “generic,” but as a dictionary term having significance in relation to the content of Respondent’s website.  The Panel accepts Respondent’s explanation that it registered at least three domain names, all common English-language terms, in order to operate in the adult entertainment field.  While it may not condone Respondent’s business, the Panel believes that the Respondent’s activities amount to a bona fide offering of services.  Thus, Respondent, before any notice of the dispute, made legitimate use of the domain name and has rights to it.

Respondent has not claimed that he has been commonly known by the domain name.  Thus, Paragraph 4(c)(ii) is not pertinent.

The Panel is without sufficient evidence to determine whether or not Respondent is making trademark or service mark use of the domain name and therefore makes no finding with respect to fair use of a descriptive term pursuant to Paragraph 4(c)(iii) of the Policy. 

Accordingly, Complainant has not met its burden with respect to Paragraph 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

There is no inference that Respondent’s primary purpose was to sell, rent or otherwise transfer the domain name to Complainant.  Thus, Paragraph 4(b)(i) is not pertinent. 

Complainant has not alleged that Respondent has engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.  Thus, the Panel finds no bad faith registration or use under Paragraph 4(b)(ii).

The parties are not competitors and there is no evidence that Respondent’s primary purpose was to disrupt Complainant’s business.  Thus, Paragraph 4(b)(iii) is not pertinent. 

While one of the evidentiary benefits of Complainant’s trademark registration is constructive notice of Complainant’s exclusive rights in the mark as registered, namely BOY & Design, such rights are limited to the goods covered by the registration, namely, “injection molding machines and parts thereof.”  Thus, even if Respondent had conducted a search among the records of the U.S. Patent and Trademark Office prior to registering the subject domain name, it is unlikely either that Respondent would have refrained from registering and using the subject domain name out of fear of infringing upon the rights of the Complainant or proceeded as he did with an intent to trade on the rights of the Complainant and attract Internet users to his site by creating a likelihood of confusion.

With respect to the third level domain name and Respondent’s use of “wild card” DNS settings, the Panel finds that Respondent was merely employing a tool to direct the broadest amount of traffic to his website, not intentionally trying to create a likelihood of confusion with any particular trademark.  This does not amount to bad faith use pursuant to Paragraph 4(b)(iv) of the Policy. 

Accordingly, Complainant has not met its burden with respect to bad faith registration and use pursuant to Paragraph 4(a)(iii) of the Policy. 

DECISION

In light of the Panel’s findings that Complainant has not met its burden of proof with respect to the second and third elements under the Policy, we find in favor of Respondent. Complainant’s request to transfer the domain name <boy.com> is hereby DENIED. 

P. Jay Hines, Presiding Panelist

Diane Cabell, Panelist

Honorable Ralph Yachnin (Ret.), Panelist

Dated: June 23, 2003

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