WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
METRO SB-Handels AG v. Internet Securities
Case No. DBIZ2002-00016
1. The Parties
The Complainant is METRO SB-Handels AG of Neuhofstrasse 4, CH-6341 Baar, Switzerland.
Represented by Eva Kessler, Corporate Counsel, of METRO AG, Schlueterstrasse 41, DE-40235, Duesseldorf, Germany.
The Respondent is Internet Securities of 12 Blain Road, Canaan, New Hampshire 03741, United States of America.
Respondent is represented by Daniel Stager, an officer of Respondent.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <budget.biz>.
The Registrar with which the domain name is currently registered is Registration Technologies Inc., United States of America.
3. Procedural History
3.1 This is a proceeding under the Start-up Trademark Opposition Policy and Rules ("STOP") for the .Biz domain. Complainant having duly filed notice of an IP claim and intent to file a STOP Complaint, the Complaint was filed with the WIPO Center ("the Center") on April 22, 2002, by e-mail and on April 25, 2002, in hard copy. Following issue by the Center of a Notice of Complaint Deficiency an amendment to the Complaint was filed on June 3, 2002.
3.2 On May 29, 2002, and June 5, 2002, the Center checked the Complaint for formal compliance with STOP and the STOP Rules.
3.3 The Center, having determined that all formal requirements had been met, sent the Notification of Complaint and Commencement of Administrative Proceeding on June 6, 2002, by courier, by facsimile and by e-mail to Respondent and to the Administrative, Technical and Billing Contact for the domain name, and by email to the Registrar and to ICANN.
3.4 The communication of the Complaint satisfies the provisions of Rule 2(a) of the STOP Rules and the courier and e-mail deliveries to Respondent were effective. The Panel is satisfied that Respondent received due notice of the Complaint.
3.5 The Administrative Proceeding commenced on June 6, 2002, and the Response was due on June 26, 2002.
3.6 The Response was filed by email on June 24, 2002, and in hardcopy on June 28, 2002.
3.7 Sole Panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on July 12, 2002.
4. Factual Background
4.1 The domain name was registered with the registrar in question, on March 27, 2002.
4.2 Complainant is a German company. It states that it belongs to the "Metro Group".
4.3 The only information available on the record with respect to Complainant or its business is that contained in the statement of "Factual and Legal Grounds" set out in the Complaint. That statement is as follows:
"Complainant has trademark rights to trademark budget. It is owner of following registered trademarks:
BUDGET, German Trademark No. 39736518
BUDGET, German Trademark No. 39904486
The trademark is well known in Germany and Europe and has a good reputation for various Non-food articles.
Complainant must assume that the Respondent has no rights to the trademark "budget". There seems to be no connection between Respondent's business and domain name. It is unlikely that Respondent has any legitimate interests in respect of the domain name "budget".
Circumstances indicate that the Respondent registered the domain name to either disrupt the business of a competitor (or business) or to attract commercial gain from the Complainant's famous trademark.
The domain name was registered in bad faith."
4.4 On June 3, 2002, Complainant sent an email message to the Case Manager reading as follows:
"this is to inform you, that Mr Stager (email@example.com <mailto:firstname.lastname@example.org>) tried to sell his .biz.Domain to us. We must assume, that he wrote to all competitors. It seems to us, he has registered the domain in bad faith, for the reason of selling it only."
Appended to that email was a chain of correspondence between Complainant and Respondent dating from May 2, 2002. Respondent objected to the Supplemental Filing, however, there is no necessity for the Panel to rule on the question, since Respondent itself has incorporated the chain of correspondence into the Response.
4.5 Complainant's trademark registrations are for a composite mark comprising superimposed block devices bearing the word "budget" in a distinctive font. The marks are registered for a range of goods in International Classes 1 to 9, 11, 12, 16, 17, 19, 21, 24, 25, 27, 28 and 31.
4.6 Respondent claims to be a financial planning and advisory organisation associated with the stockbroking firm of Coburn and Meredith. Its principal is Daniel Stager, who is the author of the Response and of the email correspondence with Complainant referred to above.
In that correspondence Mr. Stager:
∑ explains the nature of his business and his interest in the domain name;
∑ offers to transfer the domain name to Complainant in return for payment of his actual out-of-pocket costs of $1,237.50 and a letter of appreciation from Metro AG for his assistance in obtaining the domain name;
∑ advises Complainant that the domain name is the subject of a further STOP complaint filed by Budget Rent a Car Corporation.
No response appears to have been made by Complainant to that correspondence.
4.7 Respondent asserts that it:
"has been actively involved (over the past two plus years) in the development of an extensive Internet marketing program with the end result desired of driving potential business (traffic) to the Coburn website for the offering of financial products and services( including that of financial budgeting).
In support of this assertion, Respondent annexes, as Response reference 2, a letter dated April 29, 2002, from Service Solutions Inc. confirming that in February 2001, that company was retained to assist Respondent in the acquisition of proposed new domain names related to its industry services. The letter states that approximately 162 domain names directly applicable to Respondent's business were identified, and efforts were made to register as many of them as possible. The letter sets out at Respondent's request a breakdown of the fees charged to Respondent for this service, and the apportionment of those fees to the "budget" domain name, coming to a total of $1,237.50 i.e. the amount proposed by Respondent in its May 2, 2002, email to Complainant as a consideration for the transfer of the domain name.
5. Applicable Dispute
5.1 This dispute is one to which the STOP applies. Complainant duly registered an IP claim and duly filed the Complaint on receipt of notice of the registration of the domain name. As applicant for the domain name Respondent would have received notice of Complainantís IP claim and details of its trademarks.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of STOP are satisfied, namely that:
(i) the domain name is identical to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
6. Partiesí Contentions
6.1 Complainant's contentions are as set out in the statement quoted in paragraph 4.3 above.
6.2 Respondent's contentions may be summarised as follows:
(i) The word "budget" is a generic term which Respondent has used in the ordinary course of business in the offering of investment and financial planning services since 1978, long prior to Complainant's trademark registration.
(ii) Complainant's registration is confined to Germany, and even there, does not extend to financial services in Class 36.
(iii) The notice of an IP claim was not drawn to Respondent's attention until well after the design and implementation of Respondent's plan for the acquisition and future use of the domain name in the offering of its services, and it was unreasonable to expect that Respondent should have known of Complainant's German trademark rights.
(iv) Respondent denies, and Complainant offers no evidence to support, Complainant's claim, that Respondent registered the domain name to disrupt the business of a competitor, or to attract commercial gain from Complainant's famous trademark. Respondent is not a competitor of Complainant and had no reason to know of Complainant's trademark at the time of adoption of the domain name.
(v) Prior to the lodgment of the amendment to the Complaint on June 3, 2002, Complainant was aware of Respondent's claim to legitimate interest in the domain name, and its offer to transfer the domain name in return for documented out-of-pocket expenses, Complainant nevertheless persisted with the Complaint and is using the Policy in bad faith to attempt to deprive Respondent of the domain name.
(vi) Respondent therefore requests a finding of reverse domain name hijacking against Complainant.
7. Discussion and Findings
7.1 The domain name is not precisely identical to Complainant's trademark as registered. As described in paragraph 4.5 above, the registered mark is a composite mark featuring the word "budget" in a distinctive font. Complainant has produced no evidence of any use by it of the trademark otherwise than in that form. The question remains however, as to whether or not the mark should be treated as identical to the domain name for the purpose of these proceedings.
As pointed out by the learned panelist in Qtech Business Systems Pty Ltd v. Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00004,
"there should be identity between marks only when an average consumer would regard them as the same, in the sense that any differences, whether or addition, omission or modification, were "minute or wholly insignificant"."
The learned panelist then went on to state, without deciding, that
"it is probably therefore appropriate in the present case to regard the decorative motifs in the registered mark, which are undoubtedly minor, as being "minute or wholly insignificant"."
The position in the present case is similar but not the same. In the Qtech Case, the trademark was "Qtech", an invented word having no obviously descriptive meaning. The word was, of itself, prima facie distinctive as a trademark. The position here is different. The word in question is a common English word widely and generically used over a range of goods and services including those for which Complainant's marks are registered. Any distinctiveness which the mark may have, must derive either from the added decorative material and the distinctive font, or from a reputation derived from extensive use of the mark. There is no evidence of the latter. Accordingly, in considering whether or not the mark and the domain name are identical, due regard must be had to the added matter and the distinctive font.
In view of the overwhelmingly descriptive character of the word "budget" it is, in the opinion of the Panel, difficult to say that this added matter is "minute or wholly insignificant". However, as in the Qtech Case, the issue is at least arguable and it is unnecessary for the Panel to decide the issue to dispose of the case.
7.2 The Panel therefore proceeds, without deciding, on the basis that para. 4(a)(i) of STOP is satisfied.
Rights or Legitimate Interests
7.3 Complainant contends that it must assume that Respondent has no rights to the trademark "budget", that there is no connection between Respondent's business and the domain name, and that it is unlikely that Respondent has any legitimate interest in the domain name "budget". Complainant offers no evidence or argument in support of these contentions, and in the opinion of the Panel, they must fail. In the Panel's view, on the evidence, the opposite conclusions are to be drawn.
Respondent is a financial planner. It is of the essence of that activity that it would prepare budgets on behalf of its clients. It readily concedes that it sought to register a number of domain names for the purpose of attracting business to its site, and it produces evidence that, by February 2001, "budget" was a name that it was investigating for that purpose (Response reference 2). Such activity is perfectly legitimate provided that it is not done with the intention of taking advantage of the exclusive reputation of another party. The word "budget" is a common descriptive word which is totally apt for use in Respondent's line of business. Indeed Respondent claims to have done so in the ordinary course of business since 1978. Having regard to the nature of Respondent's business, there is nor reason to doubt that claim. Nor is there any reason to question the bona fides of Respondent's adoption of the domain name. There is no reason why Respondent should have been aware of Complainant's right when it decided to adopt the domain name. Even if it were, there is nor reason why it should be deterred from adopting such a manifestly appropriate descriptive term if it were available. Likewise, the fact that under the STOP procedure, it was advised of Complainant's IP claim, does not bespeak of bad faith in pursuing an application for registration of such a name.
7.4 The Panel therefore finds that Complainant has failed to show that Respondent has no legitimate rights or interests in the domain name. The requirement of paragraph 4(a)(ii) of STOP is therefore not satisfied.
Bad Faith Use or Registration
7.5 Whilst it is unnecessary to make a finding in this respect, the Panel notes that Complainant has produced no evidence to establish even a prima facie case of bad faith registration or use and the Panel therefore finds that Complainant has failed to satisfy ground 4(a)(iii) of STOP.
Reverse Domain Name Hijacking
7.6 Although Complainant was aware of Respondent's claim to legitimate interest in the domain name at a time prior to the completion of the Complaint by filing the amendment on June 3, 2002, it does not necessarily follow that Complainant has pursued the Complaint in bad faith or abusive process. Complainant had a legitimate basis for filing an IP claim. At the date of filing of the original Complaint, Complainant had no knowledge of Respondent or its claim to interest. Furthermore, it appears from the Complaint that Complainant may not have had a full understanding of what was required for the successful prosecution of a Complaint under the STOP. In these circumstances therefore, the Panel considers there is insufficient evidence to support a finding of bad faith or reverse domain name hijacking on the part of Complainant.
7.7 This is a case in which there is a further IP claim. Accordingly, the provisions of paragraph 4(l)(ii) apply.
By reason of the facts set out in paragraphs 4.6 and 4.7 above, and Respondent's contentions set out in paragraph 6.2, the Panel is of the opinion that Respondent has demonstrated that it has legitimate rights to the domain name and that the domain name is intended to be used for bone fide business or commercial purposes in the ordinary course of trade or business.
8.1 Complainant having failed to satisfy any of the requirements of paragraph 4(a) of STOP, the Complaint is dismissed.
8.2 Respondent having demonstrated legitimate rights to the domain name, the Panel decides that no subsequent challenges under STOP against the domain name shall be permitted.
Dated: July 23, 2002