WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buy Owner International, Inc. v. John Frank
Case No. D2002-0407
1. The Parties
Complainant is Buy Owner International, Inc., 5757 N. Andrews Way, Fort Lauderdale, Florida 33309, United States of America ("Complainant").
Respondent is John Frank ("Respondent" or "Frank"), Buy Owner Services, 10010 US 19, Port Richey, Florida 34668, United States of America.
2. Domain Name and Registrar
The domain name at issue is: <buyownerservices.com> (the "Domain Name").
The registrar is Network Solutions, Inc., now owned by VeriSign, Inc., 487 E. Middlefield Road, Mountain View, California 94043, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint in hard copy on April 30, 2002, and by e-mail on May 29, 2002. The required statement regarding mutual jurisdiction was received by e-mail on June 7, 2002, and in hard copy on June 12, 2002. The Center 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"). Complainant made the required payment to the Center.
On May 3, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On May 6, 2002, the Registrar transmitted via e-mail to the Center its response, confirming that the Domain Name was registered through it; that Respondent is the current registrant of the Domain Name; that the Administrative, Technical and Billing Contacts for the Domain Name are the Respondent; that the language of the service agreement is English; that the Respondent has submitted to jurisdiction at the location of the Registrar; and that the Registrar will not cancel, transfer, or otherwise alter the status of the Domain Name except as provided in paragraph 3 of the Policy.
On June 12, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail, mail, and facsimile to Respondent, and a copy (without enclosures) to the Registrar. The Center notified Respondent that his Response was to be sent to the Center by e-mail and in hard copy by July 2, 2002, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that Complainant had elected for a single panelist to decide this matter, and informed Respondent of his option to request a three-member panel.
The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), was June 12, 2002.
On July 3, 2002, the Center received the Response from Respondent. The Center acknowledged the Response on July 4, 2002. The Response, therefore, was received one day late. It is, nevertheless, within the Panel's discretion to consider the Response, and this Panel chooses to consider it.
On July 19, 2002, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by August 3, 2002.
On July 19, 2002, the Center transmitted the case file to the Panel.
4. Factual Background; Partiesí Contentions
a. The Trademark
The Complaint is based on Complainantís alleged ownership of rights in trademarks "containing BUY OWNER as the salient portion." Complainant alleges ownership of U.S. Registration No. 1,655,029 (registered in 1991), and U.S. Reg. Nos. 2,071,688 and 2,071,689, for real estate listing, advertising, and brokerage services in International Classes 35 and 36 (respectively), registered in 1997.
b. Jurisdictional Basis
The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. In Paragraph 11 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.
c. The Complaint
Complainant asserts as follows:
- That the Domain Name is confusingly similar to its trademarks because, according to Complainant, the domain name "contains all of the word portion of Complainantís registered marks, and merely makes it into a plural of Complainantís registered mark by adding an Ďsí to the end."
- That Respondent has no rights or legitimate interest in the Domain Name because he did not register it until years after Complainantís federal trademark registrations.
- That Respondent registered and used the Domain Name in bad faith in three ways: (1) by registering it "for the purpose of disrupting the business of Complainant"; (2) by using it in an intentional attempt to attract business to Respondentís web site by creating a likelihood of confusion with Complainantís mark; and (3) because Respondent "is not making a legitimate non-commercial or fair use" of the Domain Name, but rather is using it "for commercial purposes in the same field in which Complainant is using its registered marks."
d. The Response
The Response does not comport with the requirements of the Rules, Paragraph 5(b). Rather, it consists, in its entirety, of a one-page e-mail from Respondent. In it, Respondent makes three points:
(1) That Complainantís alleged BUY OWNER trademarks "are not able to be trademarked by themselves and if the case was trademark infringement then this is not the place to make that decision."
(2) That there is more than a single letter "s" differentiating the two companiesí web addresses, Complainantís web address being <buyowner.com> and Respondentís being <buyownerservices.com>. Respondent adds, albeit without proof, that there are "hundreds of similar companies with similar web address" offering similar products or services, including <byowner.com>, <byowneronline.com>, and <owners.com>.
(3) That there was no bad faith or intent to confuse in the adoption or use of the Domain Name; that the corporate logo and colors used by the two companies are different; and that there is no likelihood of confusion.
5. Discussion and Findings
a. Regulations Applicable to Consideration of the Merits
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panelís view, given that both parties to this dispute are based in the United States, applicable authority shall include relevant principles of United States trademark law.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
b. Complainantís Proof
Complainant has set forth what would, in a United States court, constitute adequate "notice pleading" of a claim of trademark infringement. It has alleged ownership of a trademark, it has alleged priority of use of that mark as compared to Respondent, and it has alleged that the Respondent uses a confusingly similar mark in the same or a related field. Complaints filed under the Policy, however, are not analogous to complaints filed in federal court. Instead of merely alleging the elements of a cause of action, a complainant is required to present all of the proof that it believes suffices to establish its entitlement to prevail. Complainant has presented sufficient proof on some, but not all, of the elements that it needs to prove.
(i) Whether Domain Name Is Confusingly Similar to Trademark
Complainant has proven that it is the owner of three federal trademark registrations for some variant of the mark BUY OWNER. The two registrations it obtained in 1997 are for that mark together with a design of a house. Those registrations are thus limited to that stylized form. It also has a 1991 registration, for BUY OWNER in block letters, in International Class 36 for "real estate listing services." That registration is in full force and effect. Complainantís registrations of its marks on the Principal Register of the United States Patent and Trademark Office ("PTO") establish a presumption of validity of the marks under United States law. See 15 U.S.C. ß 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainantís ownership of the marks. See 15 U.S.C. ß 1072.
Moreover, after the 1991 registration had been in effect for over five years, the PTO received and acknowledged Complainantís affidavit of incontestability, and the registration duly became "incontestable" (except on certain limited grounds specified by statute) pursuant to 15 U.S.C. ß 1065.
Accordingly, Respondentís contention that the mark in question "cannot be trademarked" flies in the face of the fact that the PTO has duly determined that the mark was entitled to federal registration, which registration has since become incontestable. While the federal courts, and not the PTO, are the final arbiters of the validity, registrability, strength, and other legal status of a U.S. trademark, the PTOís decision that a mark is registrable, and the fact that the mark has since become incontestable, make Complainantís trademark ownership presumptively valid absent contrary proof by Respondent. The Response offers little if anything in the way of proof.
The Panel concludes that Complainant owns a valid trademark, and trademark registration, for the mark BUY OWNER, in the field of real estate listing services.
Accordingly, the Panel turns to the question whether the mark is confusingly similar to the Domain Name.
As Respondent correctly points out, the difference between the mark BUY OWNER and the Domain Name <buyownerservices.com> is considerably more than merely the addition of the letter "s," as the Complaint incorrectly asserts. Rather, it is the addition of the word "services."
It is well established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between a trademark and a domain name. See MasterCard International Incorporated v. John Henry Enterprises, WIPO Case No. D2001-0632 (June 28, 2001) (adding word "international" to the trademark "MasterCard" does not eliminate confusion"); AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000) (adding word "global" to an AT&T trademark was insufficient to distinguish the domain name from the trademark).
Accordingly, had Respondent added the word "services" to a strong, distinctive trademark, Complainant would have a good case for showing a likelihood of confusion. Here, however Ė despite its federal registration Ė the mark BUY OWNER appears to be relatively weak. Under U.S. trademark law, marks are typically classified into one of five categories, which are (in order from weakest to strongest): generic, descriptive, suggestive, arbitrary, or fanciful. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). A reasonable argument could be made that Complainantís mark is merely descriptive of the services (buying from owners) with which it is used. Even if it could be found to bypass the "descriptive" stop on the strength spectrum and reach the "suggestive" category, it is at best a weak suggestive mark, and plainly does not come close to the "arbitrary" or "fanciful" classifications that cover the strongest trademarks. Nor has Complainant offered any proof of the markís distinctiveness in the form of evidence of secondary meaning Ė such as substantial sales volume, advertising expenditures, consumer recognition surveys, or the like.
Additionally, Respondent suggests that there are numerous third-party uses of similar marks that undermine the Complainantís claim of trademark distinctiveness and thus strength. Respondent, however, offers no proof to support his assertions, and it is not the role of the Panel to conduct research, either on the Internet or elsewhere, to determine whether such uses exist (or whether they are genuinely third-party uses rather than uses affiliated with one of the parties). Accordingly, Respondent has failed to prove third-party usage undermining the claim of trademark strength.
Nevertheless, Complainant has the burden of proof on the likelihood of confusion factor, and it has not offered proof of the strength of its mark sufficient to persuade the Panel that there is a substantial likelihood of confusion between the mark and the Domain Name. The Panel does not find that such confusion is impossible, or even unlikely, but merely finds it questionable whether Complainant has shown a substantial risk of such confusion. Because this issue is a close one, however, the Panel will proceed to analyze the remaining factors.
(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name
There is limited evidence in the record, from either side, as to whether Respondent has any legitimate interest in the Domain Name under the criteria set forth in Paragraph 4(c) of the Policy. Respondent may have been using the Domain Name in connection with a bona-fide offering of his services since prior to any actual notice from Complainant of the dispute; but he offers no evidence to prove such a defense. Moreover, registration of the marks constituted constructive notice of the Complainantís claim of right, and Respondentís usage post-dates that registration. Respondent has offered no proof that he is commonly known by the Domain Name, although it appears that he has been using it in commerce for several years. Finally, Respondentís use is not "noncommercial," so the exception in paragraph 4(c)(iii) does not apply.
The Panel concludes that there has been no showing that Respondent meets one or more of the criteria set forth in paragraph 4(c) for establishing rights or legitimate interest in the Domain Name. Again, the Panel does not conclude that no such rights exist, but merely that Respondentís proof, as set forth in his one-page Response (with no attached materials), is inadequate to establish such a defense.
(iii) Registration and Use in Bad Faith
Complainantís third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark Ö or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."
In this case, the Panel finds no evidence of this type of bad faith. Complainant does not allege that Respondent offered to sell the Domain Name, or had any intent to do so. Rather, Respondent is using the Domain Name for his own commercial enterprise.
The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant alleges no such intent or pattern, and there is no evidence of any. Complainant has not been prevented from registering a domain name containing Complainantís trademark BUY OWNER. Indeed, Complainant owns and uses the domain name <buyowner.com>. Accordingly, the Panel does not find this illustration applicable here.
The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." Complainant contends that this type of bad faith is present; but offers no proof, or even argument, to support its contention. Rather, its Complaint merely alleges that such bad faith exists. Unlike in court, where a complaint may allege facts in "notice pleading" form, a Complaint under the Policy must set forth the supporting evidence, including a discussion of why paragraph 4(b) of the Policy is applicable. See Rules ∂ 3(b)(ix). Complainant has not done so. Indeed, other than the mere fact that Complainant and Respondent operate competing businesses in the same field, there is no evidence that Complainantís business has been disrupted, or that Respondent intended to do so. He denies any such intent; and while his protestation may be self-serving, there is no contrary evidence upon which to find him at fault. Accordingly, the Panel does not find this illustration to be applicable.
The fourth illustrative example of bad faith in the Policy is a respondentís use of a domain name in an effort to attract, for commercial gain, Internet users to the respondentís web site by creating a likelihood of confusion with the complainantís mark. Complainant alleges that this type of bad faith is present. To be sure, Respondent seeks to attract Internet users to his web site for commercial gain. What is missing, however, is sufficient evidence that he has done so "by creating a likelihood of confusion with the complainantís mark." It is questionable, as discussed in Section 5(b)(i) above, whether there is any such likelihood of confusion, let alone whether Respondent had any intent to cause any such confusion. As the party with the burden of proof on this point, Complainant has not met its burden.
In sum, the Panel concludes that Complainant has failed to establish that Respondent has registered and used the Domain Name in bad faith under Paragraph 4(b) of the Policy.
In light of the findings and analysis by the Panel, the Panel decides that Complainant has not met its burden of proof under the Policy. It may (or may not) be that Respondent is infringing Complainantís federally-registered trademark. If it is, Complainantís remedy lies elsewhere Ė as Respondent correctly points out, "this is not the place to make that decision." Further evidence may be needed to prove a trademark infringement case Ė evidence that cannot easily be obtained under the Policy, whose role is limited to remedying provable cases of bad-faith domain name registration, not to resolving all claims of alleged trademark infringement.
For the above reasons, pursuant to Rule 15, the Panel finds for Respondent, and decides that Complainantís request for transfer of the Domain Name is denied.
Michael A. Albert
Dated: July 23, 2002
1. In comparing Complainant's mark to the
Domain Name, it is well established that the generic top-level domain, in this
case ".com," must be excluded from consideration as being a generic or functional
component of the Domain Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d
489, 498, (2d Cir. 2000).
2. Neither party offers proof as to how the domain names and/or trademarks in question are being used. From the Panel's visit to the Domain Name, it appears it it hosts a web site that operates in the real estate listing business.
3. The burden of proof on all issues is on the complainant in a proceeding under the Policy. However, upon a prima facie showing by the complainant that the respondent has not met any element of Paragraph 4(c), the burden of production of evidence supporting such a defense is on the Respondent. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001).