WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BUSS GmbH & Co. KG Fertiggerichte v. Steven Buss

Case No. DBIZ2001-00034

 

1. The Parties

The Complainant is BUSS GmbH & Co. KG Fertiggerichte, Ottersberg, Germany.

The Respondent is Steven Buss, residing in California, United States of America.

 

2. The Domain Name and Registrar

The Domain Name is <buss.biz>.

 

3. Procedural History

The Complaint was received by WIPO by email on December 13, 2001, and in hard copy form on December 18, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("STOP") for .BIZ and the Rules for Start-up Trademark Opposition Policy ("STOP Rules") relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with STOP.

On December 21, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was January 10, 2002.

No Response was received and WIPO issued a Notice of Default on January 14, 2002.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel.

 

4. Factual Background

The Complainant is a German company that was incorporated in 1964, and is engaged in the manufacture of food products. The Complainantís name and principal trade mark, BUSS, is the family name of the founder of the company.

The Complainant is the registered proprietor of various trade mark registrations of the word BUSS, the earliest being German trade mark registration number 1, 145,818 dated October 25, 1988.

The Complainant is also the proprietor of the domain names <buss.info> and <buss.de>.

The Respondent, whose family name is Buss, is a resident of California. He registered the Domain Name on November 19, 2001. From his CV, which has been put in in evidence by the Complainant, he appears to be a computer systems consultant with a distinguished clientele including, inter alia, Charles Schwab, IBM, Intel, Pacific Bell, Quantum and Wells Fargo Bank to name but a few.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to a trademark in which the Complainant has rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that he registered the Domain Name in bad faith.

The Complainant contends that the Respondent merely registered the Domain Name in order to connect it to a website giving his personal details, namely the CV referred to above.

The Complainant contends that the Respondent never had any intention of using the Domain Name "primarily for bona fide business or commercial purposes" as required by the .biz registration restrictions.

The Complainant goes on to quote the passage from the .biz Registration Restrictions which provides that using or intending to use the Domain Name exclusively for personal, non-commercial purposes shall not constitute a bona fide business or commercial use of the Domain Name.

The Complainant asserts that it has made enquiries but can find no trace of any trade mark registration of the name BUSS in the name of the Respondent, nor can it find any trace of any other commercial use of the Domain Name by the Respondent.

B. Respondent

The Respondent has not responded.

 

6. Discussion and Findings

General

According to paragraph 4(a) of STOP, the Complainant must prove that:

(i) The Domain Name is identical to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered or is being used in bad faith.

Rule 5(e) provides that "if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint."

The Panel has nothing before it to indicate any exceptional circumstances and now proceeds to decide the dispute on the basis of the Complaint. As indicated, the Complaint is under STOP.

If, as the Complainant contends, at the time that the Respondent registered the Domain Name he had no intention of using the Domain Name primarily for a bona fide business or commercial purpose, then he was in breach of the Restrictions Dispute Resolution Policy (RDRP), which is incorporated by reference into the Respondentís .biz registration agreement.

Paragraph 4(a) of the RDRP reads as follows:

"Applicable Disputes. In addition to the grounds set out in Paragraph 4(a) of the UDRP, you will also be required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to a Provider that your domain is not being or will not be used primarily for a bona fide business or commercial purpose. In the administrative proceeding, the Complainant will bear the burden of proving that the above element is present. A Complaint under the RDRP will not be considered valid if based exclusively on the alleged non-use of your domain name."

Given the nature of the Complainantís case, which is based solely on the alleged breach of the RDRP, a Complaint under the RDRP would have been the obvious route for the Complainant to take. However, the Complainant expressly states that this Complaint is under STOP and not the RDRP.

As will be seen, under other circumstances, the distinction might have been significant.

Identical or confusingly similar

The Domain Name comprises the Complainantís name and trade mark BUSS and the generic .biz suffix. It is well established that for comparison purposes under paragraph 4(a)(i) of STOP the domain suffix is to be ignored.

Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.

Respondentís Rights or Legitimate Interests

If, as the Complainant asserts, the Respondent registered the Domain Name in breach of the .biz registration restrictions, one would have thought that it ought to follow as night follows day that the Respondent can have no rights or legitimate interests in respect of the Domain Name. However, paragraph 4(c)(iii) of STOP presents a potential problem. It provides that if the Respondent can demonstrate to the satisfaction of the Panel that he, as an individual, has been commonly known by the Domain Name that shall [emphasis added] demonstrate his rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) and even if he has acquired no trade mark or service mark rights in the Domain Name.

In this case, there is no dispute that the Respondentís family name is Buss and that he will have been commonly known by it. While it might be said that the Domain Name in this case is <buss.biz> and not Ďbussí, the fact is that for most purposes under STOP and in particular for the comparison under paragraph 4(a)(i) and for the purposes of paragraph 4(c)(i) the term "domain name" is deemed to include the domain name without the domain suffix. In the context of an individual, a situation that is expressly contemplated by paragraph 4(c)(iii), "domain name" must include the name without the suffix.

The word "shall" in paragraph 4(c) is plainly mandatory. Accordingly, on one view, breach of the registration restrictions does not prevent a respondent demonstrating rights or legitimate interests in respect of a domain name in circumstances where the domain name in question is the name by which the respondent is known and notwithstanding that a complaint under the RDRP on the same facts might well succeed.

No doubt, the answer to this apparent anomaly is that it was for precisely this reason that the Complaint procedure under the RDRP was devised.

In this case, it is not necessary for the Panel to rely solely on what may seem to some an unattractive and unduly restrictive approach, for the Panel has come to the conclusion that the Respondent was probably justified in adopting the Domain Name for another and better reason.

As indicated above, the Complainant has exhibited the Respondentís CV, from which it appears that the Respondent is a computer systems consultant who operates under his name, Steven Buss. His CV identifies fourteen consultancy projects that he has undertaken between 1993 and 2000, with many of them running concurrently. The inference is that he is an independent consultant. His CV identifies no "employer" as such, although it does contain an impressive list of clients, some of which are identified above.

The Panel concludes, on the balance of probabilities that Steven Buss holds himself out as an independent computer consultant and conducts his consultancy practice under his own name.

On that basis, the Panel concludes that from long before the Respondent registered the Domain Name, the probability is that the Respondent has been using his own name and/or a name corresponding to the Domain Name in connection with a bona fide offering of services (paragraph 4(c)(ii) of STOP). In that event it is quite possible that the Respondentís purpose in registering the Domain name was with a view to using it in relation to his business. Certainly, the Panel is not prepared to assume the contrary on the evidence put in by the Complainant. The Panel also finds that Buss is the Respondentís family name and that he has been commonly known by that name. (Paragraph 4(c)(iii) of STOP).

In the result, the Panel finds that the Respondent has rights or legitimate interests in respect of the Domain Name.

Bad Faith

In light of the finding that the Respondent has rights or legitimate interests in respect of the Domain Name, it is not strictly necessary for the Panel to address the bad faith allegation. Nonetheless, in these circumstances and in the absence of any evidence to suggest that the Respondent is not proposing to use the Domain Name in connection with his business as a computer systems consultant, by the same reasoning, the Respondent cannot be said to have registered the Domain Name in bad faith.

There is no evidence before the Panel to show that the Respondent is yet using the Domain Name in any way. Accordingly, again in the absence of any evidence as to how the Respondent proposes to use the Domain Name, in the circumstances of this case the Respondent cannot be said to be using the Domain Name in bad faith.

 

7. Decision

The Complaint is dismissed.

 


 

Tony Willoughby
Sole Panelist

Dated: March 26, 2002