WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IGT v. Omni Investments
Case No. DBIZ2002-00144
1. The Parties
The Complainant is IGT, 9295 Prototype Way, Reno, Nevada 89511, United States of America.
The Respondent is Omni Investments, P.O. Box 177, Abington, Pennsylvania 19001, United States of America.
2. The Domain Name and Registrar
The domain name is <megabucks.biz>. The Registrar is Domain Bank, Inc. of Bethlehem, Pennsylvania.
3. Procedural History
The Complaint was made pursuant to the Start Up Trademark Opposition Policy for .biz adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("the STOP Rules"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for .biz ("the WIPO Supplemental STOP Rules").
The electronic copy of the Complaint was received by the Center on April 26, 2002, with the hard copy received on April 30, 2002. The Center acknowledged receipt of the Complaint on May 3, 2002, and completed its formal requirements check list on May 13, 2002. That same day, the Center issued its notification of Complaint and Commencement of Administrative Proceedings. The Center received Respondentís Response by e-mail on June 3, 2002, and issued its Acknowledgement of Receipt of the Response that same day. This Panel was appointed on June 12, 2002, and the Center transmitted the case file to the Panel that same day.
4. Factual Background
IGT is the owner of Trademark Registration No. 1,648,014 for the trademark MEGABUCKS. The mark is registered in connection with slot machines with and without a video output and entertainment services namely conducting a game of chance simultaneously at multiple, independent gaming establishments.
Omni Investments is a subsidiary of Omnikon, Inc. a Wisconsin corporation incorporated under the Wisconsin Business Corporation Law under No. D018741 and is authorized to do business in the Commonwealth of Pennsylvania under Certificate No. 2971855.
5. Partiesí Contentions
Complainant asserts that it has used its registered trademark MEGABUCKS since at least as early as November 14, 1985, in connection with the services listed in the registration. Complainant asserts that with the exception of the generic element .biz, the domain name <megabucks.biz> is identical to Complainantís registered trademark.
Complainant asserts that Respondent has no legitimate rights in the domain name <megabucks.biz> because the domain name had and has no relevance to Respondent; because Respondent was not commonly known as "MEGABUCKS" prior to obtaining the domain name in dispute and apart from the domain name registration is not currently known as "MEGABUCKS"; because Respondent has not acquired any trade or service mark rights in the domain name; and because Respondent is not a licensee of Complainantís mark and is not otherwise authorized to use Complainantís mark.
Complainant asserts that Respondent has registered the domain name in bad faith because Respondent not only has no legitimate interest in "MEGABUCKS" but may not even be a legitimate company. Complainant asserts that according to the Pennsylvania Secretary of Stateís on-line data bases of current and former registered entities, Respondent is not and has never been registered as a corporation doing business in Pennsylvania. Complainant annexed a copy of the search results from these data bases to its Complaint and attached a Dunn & Bradstreet Business Information Report also indicating that no such entity is currently operating in the United States. Complainant asserts that the domain name Respondent provided as an e-mail address in registering <megabucks.biz> (USA.com) is used by an on-line business directory, which Complainant asserts has no record of Respondent either. Finally, Complainant asserts that since Respondent does not seem to be a legitimate entity it must have registered the domain name at issue to prevent Complainant from doing so and/or to reap a financial gain by selling the registration to Complainant or one of its competitors.
Respondent asserts that it is a subsidiary of Omnikon, Inc., a Wisconsin corporation incorporated under the Wisconsin Business Corporation Law (File No. D018741) and authorized to business in the Commonwealth of Pennsylvania under Certificate No. 2971855, with its principal place of business located at 1730 Ferndale Avenue, Suite 001, Abington, Pennsylvania 19001. The Respondent listed its Federal Employment Identification Number, Corporation Number and Certificate of Doing Business Number in its Response.
Respondent asserts that it sells a Manual titled MEGABUCKS through mail order, which manual provides completely legitimate, proven techniques and powerful marketing concepts for entrepreneurs and businesses. Respondent asserts that it has consistently used MEGABUCKS since 1999 as part of its trade name in connection with its mail order business. Respondent asserts that the goods it sells under MEGABUCKS are distinct from those sold by Complainant; that while Complainant is in the business of manufacturing and selling slot machines, Respondent is in the business of selling a Manual of powerful wealth secrets.
Respondent asserts that Complainant has not only unreasonably delayed in asserting its alleged right to use the name MEGABUCKS, but it has also acquiesced in the use of the name by others.
Finally, Respondent asserts that it registered the domain name at issue for commercial purpose and never registered or used it in bad faith.
6. Interim Orders
On June 24, 2002, this Panel issued its Interim Order No. 1, requesting that Respondent provide evidence of its assertions in Section B.6. of its Response. Specifically, the Panel requested evidence of Respondentís authorization to do business in Pennsylvania; its mail-order offers of its publication MEGABUCKS, and at least the cover and title page of the manual which Respondent asserts it is selling under the name. The Order required Respondent to provide the requested documentation within ten calendar days after the date of the Order.
On July 8, 2002, this Panel received Respondentís request for an extension of time up to July 12, 2002, to furnish the additional documents requested. Respondent asserted it was unable to locate the original Certificate of Authority issued to Omnikon, Inc. to do business in the State of Pennsylvania. Respondent asserted it applied for a duplicate copy of the Certificate and expected to receive it on or before July 12, 2002.
In view of the foregoing, the Panel issued its Interim Order No. 2, granting Respondent an extension until July 19, 2002, to submit to the Center a copy of the duplicate Certificate of Authority issued to Omnikon, Inc. to do business in the State of Pennsylvania. However, since Respondent claimed no difficulties in obtaining the other information requested by the Panel, the Panel gave an additional extension of three business days from the date of its second Interim Order to provide the remaining documentation to the Center by facsimile or e-mail; namely of mail order offers of Respondentís publication MEGABUCKS and at least the cover and title page of the publication which Respondent claims it is selling under the name.
On July 15, 2002, the Center received from Respondent a facsimile purporting to be the cover page for Respondentís publication "Selling Without MEGABUCKS Ė How to Sell Anything on a Shoestring", together with what is apparently a frontispiece for the book and an advertisement for the publication. The Center forwarded these documents to the Panel on July 16, 2002.
On July 19, 2002, the Center received from Respondent a copy of an application for Certificate of Authority for Omnikon, Inc. The Center forwarded this document to the Panel that same day, July 19, 2002.
7. Discussion and Findings
A. Applicable STOP Provisions
The STOP requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
STOP, Section 4(a).
The STOP states that the following circumstances shall be evidence of the registration or use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant has] registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
ii) [the Registrant has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.
STOP, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
i) You are the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.
STOP, Section 4(c).
B. Opinion of the Panel
The Panelist is of the opinion that Respondent has met its burden of demonstrating rights to and legitimate interests in the subject domain name in its Response. Specifically, Respondent has provided evidence that it is a legitimate company, registered and doing business in the State of Pennsylvania; that it is providing goods under its name unrelated to the goods and services of the Complainant, and that it did so before any notice to it of the current dispute. Specifically, Respondent claims it has used the name MEGABUCKS in connection with a mail order business for the sale of a manual providing wealth-building secrets for entrepreneurs and businesses.
Because Respondent has met its burden of proving rights to and legitimate interests in the domain name, Complainantís Complaint must be denied.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the STOP, and Paragraph 15 of the STOP Rules, this Panel denies the remedy requested by Complainant.
Jordan S. Weinstein
Dated: August 2, 2002