WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ziegenfelder Co. v. VMH Enterprises, Inc.
Case No. D2000-0039
Claimant is Ziegenfelder Company a West Virginia corporation with its principal place of business located at 87 Eighteenth Street, Wheeling, West Virginia, 26003 USA. Respondent is VMH Enterprises, Inc. is a corporation with its principal place of business located at 8369 Prairie Clover Way, Parker, Colorado 80134, USA.
The Domain Name(s) and Registrar(s)
The domain name at issue is <budgetsaver.com>. The registrar is Network Solutions, Inc. (the "Registrar") of Herndon, Virginia.
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Ziegenfelder Company on February 4, 2000 by email and on February 8, 2000 in hardcopy. The Complainant paid the required fee.
On February 9, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant. On the same date, the Center sent to the Registrar a request for verification of registration data. On February 10, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain names in dispute and that <budgetsaver.com> is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on February 13, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint and of the supplemental letter. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 13, 2000.
On February 25, 2000, the Center received the Respondent's Response in hardcopy, which the Center acknowledged to the parties. On March 3, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Richard W. Page as the single panelist ("Presiding Panelist"). On the same date, the Center notified the parties of this appointment.
Since March 24,1989, Complainant has used the trademark BUDGET$AVER to market its frozen confections. On October 23, 1989, Complainant filed its BUDGET$AVER trademark with the United States Patent and Trademark Office. On August 14, 1990, trademark Registration No. 1,609,978 issued in international class 30.
On December 8, 1999, Respondent registered the domain name <budgetsaver.com>.
On December 20, 1999, Respondent contacted Complainant by fax indicating an interest in purchasing <budgetsaver.net> and <budgetsaver.org>. On January 5, 2000, Respondent offered to sell <budgetsaver.com> to Complainant for US$15,000 and represented that Respondent was in the pharmaceutical field.
As of January 31, 2000, Respondent operated a website at www.budgetsaver.com in which the content was a listing of domain names for sale, including <budgetsaver.com> for an asking price of US$25,000. As of January 31, 2000, Respondent had not paid the Registrar for registration of the <budgetsaver.com> domain name.
By February 3, 2000, Respondent had paid the registration fee to the Registrar and had raised the asking price of the domain name <budgetsaver.com> to US$500,000.
5. Parties’ Contentions
A. Complainant contends that the domain name <budgetsaver.com> is confusingly similar to the trademark BUDGET$AVER pursuant to the Policy paragraph 4(a)(i).
B. Complainant contends that Respondent has no rights or legitimate interest in the domain name <budgetsaver.com> pursuant to the Policy paragraph 4(a)(ii).
C. Complainant contends that Respondent registered and is using the domain name <budgetsaver.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent contends that the domain name <budgetsaver.com> is not confusingly similar with the trademark BUDGET$AVER because of the use of the dollar sign and of styled fonts and because the domain name and the trademark are used in different market areas.
E. Respondent contends that it has rights and legitimate interest in <budgetsaver.com> because of Respondent’s contemplated sale of pharmaceutical products under that name.
D. Respondent contends that its registration and use of <budgetsaver.com> is in good faith after conducting trademark and domain name searches.
6. Discussion and Findings
The use of the dollar sign and of styled fonts in the trademark BUDGET$AVER are easily associated with the letter "s". Therefore, confusing similarity exists with the domain name <budgetsaver.com>. Respondent has only announced its intent to market in the area of pharmaceuticals. There is no evidence of actual marketing by Respondent. Therefore, Respondent’s contentions regarding a lack of confusing similarity fail. The trademark and domain name at issue are confusingly similar.
Rights or Legitimate Interest.
Respondent registered <budgetsaver.com> on December 8, 1999 and contacted Complainant regarding a potential sale on December 20, 1999. During this time no product or service was marketed using <budgetsaver.com>. Therefore, Respondent has established no rights or legitimate interest in <budgetsaver.com>.
Respondent admits that it conducted a trademark search before registering <budgetsaver.com> and had knowledge of the trademark BUDGET$AVER. Within twelve days of registering the domain name, Respondent made contact with Complainant to broach the subject of buying or selling domain names. The only content listed on the website www.budgetsaver.com was the listing for sale of a series of domain names including <budgetsaver.com>. Based upon these facts the Presiding Panelist concludes that the registration and the use of <budgetsaver.com> was and is in bad faith.
The Presiding Panelist concludes (a) that the domain name <budgetsaver.com> is confusingly similar to the trademark BUDGET$AVER, (b) that respondent has no rights or legitimate interest in the domain name and (c) that respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Presiding Panelist orders that the domain name <budgetsaver.com> be transferred to Complainant.
Richard W. Page
March 14, 2000