WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Council of Better Business Bureaus, Inc. v. Tifton Haynes
Case No. DBIZ2002-00079
1. The Parties
The Complainant is Council of Better Business Bureaus, Inc., a Delaware not-for-profit corporation with its principal offices in Arlington, Virginia, United States of America.
The Respondent is an individual named Tifton Haynes, with a residence in Pigeon Forge, Tennessee, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <bbb.biz> ("Domain Name"), which is registered with OnlineNIC, Inc.
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on April 26, 2002, and by hardcopy on April 29, 2002. The Complaint was made pursuant to the Start-Up Trademark Opposition Policy for .BIZ (the "STOP") adopted by NeuLevel and approved by the Internet Corporation for Assigned Names and Numbers on May 11, 2001, and is in accordance with the Rules under that Policy and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ. The Center formally commenced this proceeding on May 14, 2002. On June 3, 2002, Respondent timely filed a Response by email; the hardcopy was received by the Center on June 6, 2002. On July 3, 2002, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Panelist.
4. Factual Background
Complainant is an umbrella organization for local Better Business Bureaus throughout the United States. Complainant is known for promoting fairness and ethical relationships between businesses and consumers. Complainant holds numerous registrations for the trademark "BBB" in several countries, including in the United States (Registration No. 2,314,197, registered February 1, 2000).
Respondent is an individual who appears to own several small businesses providing tourism services in the Tennessee area. Respondent registered the Domain Name on or about March 27, 2002.
On April 18, 2002, Complainant sent an e-mail to Respondent explaining that Complainant held the trademark BBB" inquiring as to Respondentís intentions with respect to <bbb.biz>, and informing Respondent of its intent to pursue a STOP action absent further discussion with Respondent. Respondent replied via e-mail on April 23, 2002, questioning Complainantís concerns and intentions regarding <bbb.biz>. Respondent elected not to disclose to Complainant in his reply any information about his claimed rights to the Domain Name or his intentions with respect to use of the Domain Name.
5. Partiesí Allegations
Complainant alleges that the criteria specified in STOP Paragraph 4(a) have been satisfied because (i) the domain name is identical to a trademark in which Complainant has rights, (ii) Respondent has no rights or legitimate interests in respect of the domain name, and (iii) the domain name has been registered or is being used in bad faith.
Complainant asserts that the domain name <bbb.biz> is identical to its trademark BBB. Complainant maintains that Respondent has no rights in the domain name, is not making any use of the name, and that Respondent has not offered any legitimate use for the name. As evidence of bad faith Complainant submits that Respondent has been evasive in his e-mail correspondence, and that Respondent has registered a number of domain names seemingly unrelated to his personal businesses, suggesting a pattern of acquiring domain names for the sole purpose of selling or transferring the domain names to interested parties for valuable consideration in excess of Registrantís out-of-pocket costs for registering the names.
Respondent does not deny that Complainant has rights in the trademark BBB, or that the domain name <bbb.biz> is identical to that trademark. He does, however, insist that he has legitimate interest in the name, and that he has neither registered, nor is using, the name in bad faith.
Respondent claims that, as part of the operation of his tourism businesses, he uses distinct, easy-to-remember domain names in print advertising, as well as using unique domain names in each advertisement to determine the effectiveness of the ads through web statistics tracking software. In furtherance of this goal, Respondent states that he has attempted to register all 26 single letter trioís in the .biz gTLD, although was only able to obtain <kkk.biz> and <sss.biz> in addition to <bbb.biz>.
In contesting the claim of bad faith, Respondent argues that there is no evidence that he registered the domain name intending it to sell it, and that he has not offered to sell or lease the name to anyone. Additionally, Respondent asserts that that he has not registered the domain name to prevent the Complainant from obtaining it or for disrupting Complainantís business, as he is not in business competition with the Complainant. Finally, Respondent maintains that it is not his intent to cause, nor is there any likelihood of, confusion between his intended use of the domain name and the Complainantís mark.
6. Discussion and Findings
Under the STOP, a Complainant must demonstrate that all three of the elements specified in STOP Paragraph 4(a) are satisfied:
(i) the domain name in dispute is identical to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered or used in bad faith.
A. The Domain Name is Identical to Complainantís Trademark
Respondent does not dispute that the domain name <bbb.biz> is identical to Complainantís registered trademark BBB. Accordingly, the first factor is satisfied.
B. Respondent Lacks Rights or Legitimate Interest in the Domain Name
Under the STOP (like under the UDRP, see Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000)), the burden is on the Complainant to make a prima facie showing that Respondent lacks any rights to or legitimate interest in the Domain Name. Once that showing is made, the burden of production shifts to the Respondent to show that he has a legitimate interest (though the burden of proof always remains on the Complainant).
Here, Complainant has met, though only barely so, the requirement of making a prima facie showing. That requirement is satisfied through Complainantís assertions that the BBB mark is well known through its use for more than 85 years and that Respondent has refused, in the partiesí correspondence, to articulate why he believes he has a right to this domain name. Although the Panel wishes that Complainant had been more forthcoming (for example, informing the Panel that, based on investigation, it can confirm that Respondent has not used the BBB mark in its business, has not been known as BBB, and is not a licensee of Complainant), Respondentís cagey reply did give rise to a fair inference that Respondent lacked a legitimate interest; otherwise, it would have happily disclosed the basis for its rights in its response. Accordingly, the burden of production shifts to the Respondent to come forward with evidence showing that he has a right to or legitimate interest in the Name.
Under Paragraph 4(c) of the STOP, a Respondent may demonstrate rights or legitimate interests in a domain name by showing (1) that Respondent owns or benefits from a mark that is identical to the name; (2) Respondentís use of or preparation to use the name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or (3) that Respondent has been commonly known by the domain name. This list is not exhaustive, but rather merely indicative of the types of interests that may be deemed legitimate.
Read in the most favorable light, Respondentís claim is that he has a legitimate interest in the Domain Name because he has made preparations to use the name in connection with the bona fide offering of vacation lodging rentals. Respondent has submitted a copy of a proposed print advertisement incorporating the web address <bbb.biz> in support of this contention, and states that the ad is on hold pending the outcome of this proceeding. No web site has yet been posted at <bbb.biz>, although Respondent seems to state that all the site would do is resolve to one of his main business sites.
Although the proposed print ad may be sufficient to show preparations to use the domain name in connection with a the offering of goods or services, the question remains whether the offering is bona fide. That, depends in part, on why Respondent has selected this Domain Name, and whether the particular Domain Name has any rational connection to Respondentís proposed business.
Respondent states that he selected the Domain Name because, given that it is three repeating letters, it is memorable. The mere fact that a three letter combination is memorable cannot, however, give rise to a legitimate interest in that name if the three letters form the famous mark of another. Thus, for example, <nfl.biz>, <ibm.biz>, and <twa.biz> might all be memorable three letter domain names, but, without some legitimate connection between those particular letter combinations and the content or proposed content of the website, Respondent could not use those famous marks to promote his tourism business. Cf. e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001) (no legitimate interest in using misspelling of education to divert Internet users to site selling unrelated products and services).
The Panelís ultimate decision on this point is informed by the Panelís belief that the BBB trademark is well known. Neither party directly addressed this issue, but the Panel cannot help but note that most U.S. consumers are likely aware of the BBB mark and its relationship to Complainant (notwithstanding Respondentís evidence that two other parties have registered BBB for wholly unrelated services). To test this proposition, the Panel searched for the term BBB on the yahoo.com website to determine the extent to which use of BBB, on the Internet, is tied to Complainant. More than 90 percent of the top eighty hits referred to Complainant or its affiliated Bureaus. This is reasonable evidence that the BBB mark is a well known reference to Complainant, a reference that would likely be reinforced by use of the mark in the context of a .biz gTLD which, because it is an abbreviated form of the word "business," is all the more likely to suggest that <bbb.biz> is associated with the Better Business Bureaus.
Given the fame of Complainantís mark, Respondent cannot claim a legitimate interest in using that Domain Name because of its short, memorable quality. Accordingly, Respondent has failed to demonstrate a legitimate interest in the Domain Name.
C. Respondent Registered the Domain Name in Bad Faith
The most difficult issue in this proceeding is determining whether Respondent registered or used the Domain Name in bad faith. This inquiry is complicated in the context of a STOP proceeding which, by necessity, must be brought early in the life of the challenged domain name, before Respondent has had much of an opportunity to use it. Accordingly, in resolving this issue, the Panel has little choice but to draw fair inferences presented by the evidence, circumstantial or otherwise. Fisher Communications, Inc. v. Escape Ventures, Inc., Case No. DBIZ2001-00041 (March 6, 2002).
A number of Complainantís claims of bad faith are clearly insufficient. For example, although Respondentís refusal in correspondence to disclose his intentions with respect to the Domain Name may give rise to a legitimate question in Complainantís mind as to whether he has a legitimate interest, this alone cannot be evidence of bad faith. Domain name registrants are not obligated to respond to demand letters, and the failure to do so is simply silence Ė it is not bad faith. That is especially so here given Respondentís reasonable explanation that he was reluctant to discuss potentially legally significant matters with Complainantís counsel without fully understanding Complainantís purpose.
Nor is the fact that Respondent is an individual, rather than a company, indicative of bad faith. If Respondent failed in the future to use a .biz domain name in connection with a commercial enterprise, it may give rise to an Restrictions Dispute Resolution Policy (RDRP) challenge, but it is not relevant to the question of whether Respondent registered the name in good or bad faith.
Also unavailing are Complainantís arguments that Respondent has registered numerous domain names, including <cosby.biz>, and therefore that Respondent must have registered <bbb.biz> with the intent of reselling it for a profit. Respondent specifically denies that he has any intent of selling any of the domain names he registered; instead, he explains, he promotes tourism services, including in Cosby, Tennessee. This is not suggestive of a pattern by Respondent of misappropriating domain names containing the famous marks of others, whether for sale or for other nefarious purposes.
Nevertheless, given the Panelís finding (albeit on a fairly thin paper record) that the BBB mark is well known, and Respondentís failure to affirm that he never heard of BBB as a mark of Complainant, cf. Trans Continental records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (April 30, 2002), the Panel infers that Respondent was aware of Complainantís rights in the BBB mark at the time it sought to register the Domain Name. If that inference is correct, the registration of <bbb.biz> to promote Respondentís tourism business is indicative of bad faith because it would represent an attempt to divert Internet consumers looking for Complainantís site to Respondentís commercial site.
Although it is a close question, the Panel finds by a preponderance of the evidence that Respondent likely registered the Domain Name in bad faith. Because this question is such a close one and because the record is sparse with respect to the fame of Complainantís mark and Respondentís knowledge of Complainantís mark, the Panel specifically reminds the parties that, should Respondent disagree with these findings and conclusions, it may elect to pursue this matter in court where, through discovery, cross-examination and the adversary process, a more thorough evaluation of the Respondentís intent could be had. STOP Paragraph 4(k).
Complainant has established, by a preponderance of the evidence, each of the three factors listed in STOP Paragraph 4(a): that the domain name <bbb.biz> is identical to Complainantís mark BBB, that Respondent lacks any rights to or legitimate interests in the Domain Name, and that Respondent likely registered it in bad faith, with knowledge of Complainantís rights in the well-known BBB mark. Accordingly, the Panel orders that the Domain Name be transferred to Complainant.
David H. Bernstein
Dated: July 24, 2002