WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Inc. v. DomainDiscover
Case No. DBIZ2002-00219
1. The Parties
The Complainant is Time Inc., a corporation organized in the State of Delaware, United States of America, with place of business in New York, New York, United States of America.
The Respondent is DomainDiscover, with address in San Diego, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is <business2.biz>.
The registrar of the disputed domain name is DomainDiscover, with business address in San Diego, California, United States of America.
3. Procedural History
(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP Policy") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center ("WIPO") on April 29, 2002, and received in hardcopy on May 2, 2002. WIPO verified that the complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
(b) On May 13, 2002, WIPO received a supplemental filing from Complainant of Annexes E and F to its complaint incorporating information regarding its asserted trademark.
(c) On May 23, 2002, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was June 11, 2002.
(d) On June 12, 2002, WIPO transmitted by e-mail notification to Respondent of its default in responding to the complaint.
(e) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on June 25, 2002, WIPO appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment. WIPO advised the Panel that absent exceptional circumstances it would be required to forward its decision to WIPO by July 10, 2002.
(f) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.
4. Factual Background
Complainant asserts that is the holder of trademark registration for the term "BUSINESS 2.0" on the Principal Register at the United States Patent Office ("USPTO"), by assignment from Imagine Media, Inc., in International Classes 16 (covering "Magazines in the fields of business, commerce and technology") and 35 (covering "Providing information in the fields of business and commerce by means of a global computer network"). Complainant refers to the application serial number as its trademark registration number (Complaint, para 13.2) (Serial No. 75443294, filing date Mar. 2, 1998). Complainant forwarded to WIPO a Saegis Custom Report purporting to be the "U.S. trademark registration certificate" for "BUSINESS 2.0". This report shows an intent to use allowance and acceptance of statement of use for registration, though not a completed registration. The assignee of the "BUSINESS 2.0" mark is "ECOMPANYNOW INC." Complainant has indicated that "eCompany Now" is part of its FORTUNE Group, and information on the Business 2.0 website indicates that that the magazine is "published out of the FORTUNE Group at Time, Inc., an AOL Time Warner company". (Complaint para. 13, and Annexes E, and Panel visit of July 10, 2002)
In the trademark application for "BUSINESS 2.0" the exclusive right to use "BUSINESS" is disclaimed.
Complainant has submitted a Saegis Custom Report showing "registration" status of the mark "BUSINESS 2.0" in France, application no. 82370999, applied for November 17, 1999, notification of registration April 21, 2000, with "last reported owner: FUTURE PUBLISHING LIMITED". Complainant asserts that it "is also the proprietor of one French trade mark registration in the name ĎBusiness 2.0í, and refers to acquisition of the magazine from "Future Network", though it does not explain its precise ownership status in relationship to the French trademark registration. (Id., and Annex F)
Complainant and eCompany Now hold registrations for the domain names <business20.com>, <business20.info>, <business20.biz>, <business2mag.info> and <business2mag.biz> (id., para. 13).
Following an acquisition in July 2001, Complainant initiated publication of BUSINESS 2.0 magazine in August 2001 with a paid subscription base of 550,000 (id.).
Complainantís parent company (AOL Time Warner) maintains a commercial website at <www.business2.com> that incorporates content from various magazines, including BUSINESS 2.0, eCompany Now, Fortune, Money, FSB and CNET (id.). Content at Complainantís BUSINESS 2.0 website is identified under the heading "BUSINESS 2.0", with the Internet address (URL) <www.business2.com> appearing as a subheading beneath "BUSINESS 2.0" (id., and Panel visit of July 10, 2002).
References to Complainantís "BUSINESS 2.0" magazine and website are consistently listed as top results in Google.com and Yahoo! searches of the strings "Business2.0" and "Business2".
A NeuLevel WHOIS Database printout submitted by Complainant shows that Respondent, DomainDiscover, registered the disputed domain name on March 27, 2002.
Following the ordinary NeuLevel start-up period allocation procedure for .biz generic top level domain names (gTLDs), Respondent was notified by e-mail from NeuLevel on March 14, 2002, that Complainant had asserted an IP Claim for the alphanumeric string <business2.biz>. This was based on Complainantís asserted French registered trademark, registered or applied for 1999-11-07. (Complaint, Annex G)
There is no evidence in the record of this proceeding of any use by Respondent of the disputed domain name.
The .biz Registration Agreement incorporates the STOP Policy and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, DomainDiscover, Respondent accepted the .biz Registration Agreement. In doing so, Respondent consented to be bound by the STOP Policy and STOP Rules. The STOP Policy and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which WIPO is one. This Panel is appointed by WIPO to decide the complaint under the STOP Policy pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant asserts that it holds rights in the trademark "BUSINESS 2.0" (see Factual Background supra) as evidenced by its registration of that mark in the United States and France and by its use in connection with a magazine and on the Internet.
Complainant states that it is unable due to constraints imposed by domain name registrars to register a domain name including a period or full stop anywhere in the string. Complainant states that:
"A substantive portion of the Ďbusiness2.bizí domain name is identical to the Complainantís trade mark registrations issued in the name BUSINESS 2.0. Further, as has been demonstrated above, Complainant is well known and recognised by the brand name BUSINESS2 through its use in registered domain names, its main business website, www.business2.com and the registered keyword Ďbusiness2í. As the Complainant is prohibited from registering an exact match of their BUSINESS2.0 brand as a domain name, their use of the brand and related products centre, to a large extent, around the name ĎBUSINESS2í. Consequently, the Complainant has established goodwill and reputation in the BUSINESS2 name."
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges, inter alia:
"should Respondent argue that the registration of the domain name Ďbusiness2.bizí was due their to business activities as a domain name registrar or other associated business interests, Complainant submits that such an argument cannot hold. Such use is so generic and descriptive of Respondentís business activity that it is not legitimate use and as such, Respondent cannot claim trade mark rights, including common law rights, in the name BUSINESS2."
Complainant asserts that it has "prior and better rights in the names BUSINESS2 and BUSINESS2.0" through its legitimate and extensive use and "domain name portfolio".
Complainant acknowledges that as a consequence of the NeuLevel start-up distribution procedure, Respondent has been precluded from using the disputed domain name, and that its claim of bad faith must be based on its registration. In this regard, Complainant argues that bad faith is evidenced by Respondentís election to proceed with registration following notice of Complainantís IP Claim for <business2.biz>. Respondent would have known of Complainantís brands since Respondents "are a business entity and as such, are premium targets for the BUSINESS2.0 magazine and associated products".
Complainant further argues that since Respondent is an ICANN approved registrar in the domain name registry business, it is likely to have registered the disputed domain name to sell, rent or transfer it to a competitor of Complainant or Complainant itself for valuable consideration in excess of Respondentís out of pocket expenses directly related to the name.
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to Complainant.
Respondent has not replied to Complainantís contentions.
6. Discussion and Findings
The STOP Policy is a set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz gTLD, regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP Policy is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes. However, the STOP Policy differs from the UDRP in certain material respects regarding comparison of the mark and the domain name, the enumerated criteria for establishing rights or legitimate interests, the enumerated elements necessary to demonstrate bad faith and in the types of remedy available. The Panel will make findings under the STOP Policy necessary to render a determination in this dispute.
In order to establish the right to transfer of a name from a respondent, a complainant under the STOP Policy must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
The complainant must prove that each of these three elements is present.
WIPO transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. There is no indication in the file that the courier mailing was not successfully delivered. The Panel finds that WIPO took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
There is a substantial difference between the first element that must be proven under the STOP Policy and the related element under the UDRP. Under the UDRP, a complainant must demonstrate that a disputed "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (UDRP, para. 4(a)(i)). Under the STOP Policy, a complainant must demonstrate that the disputed "domain name is identical to a trademark or service mark in which the Complainant has rights" (STOP Policy, para. 4(a)(i)).
Complainant asserts rights in the mark "BUSINESS 2.0". Although Complainant has not properly characterized the registration status of the mark in the United States, the mark has been approved for registration. The mark is registered in France, though it is difficult for the Panel to determine based on Complainantís submissions whether Complainant is holder or assignee of the registration in France, or is basing its claim on an authorization or license from Future Publishing Limited. Based on the USPTO approval for registration, as to which registration should issue as a matter of course, the Panel is prepared to accept that Complainant has rights in the trademark "BUSINESS 2.0" for use in connection with publication of a business, commerce and technology magazine and providing online information in the fields of business and commerce.
Complainant also asserts rights in the name "BUSINESS2" based on its use in connection with its <www.business2.com> website. There is a substantial difference between the terms "BUSINESS 2.0" and "BUSINESS2". The numeral "2.0" is of the designation-type initially used by computer software developers to refer to program release versions. The numeral-point-numeral usage today has become more common in various fields of endeavor to refer to specific revisions or releases of publications or products. Complainant and its predecessor publishers chose to combine the term "BUSINESS" with the numeral-point-numeral designation "2.0" for reasons best known to them. Complainantís establishment of rights in "BUSINESS 2.0" does not accord it rights in "BUSINESS2" in the sense that those terms are identical in a trademark sense. They are not.
Complainant asserts that "BUSINESS2" is its trademark in its own right. Complainantís support is that the domain name <business2.com> is used to identify its commercial website where it hosts an online version of its "BUSINESS 2.0" magazine, and that Google and Yahoo! searches entering "Business2.0" and "Business2" yield top results identifying its magazine website. However, all five of the Yahoo! results for Business2 refer specifically to "BUSINESS 2.0" as the search heading reference. Only three of 10 Google results for "Business2" refer at all to Complainant, and these are to the "BUSINESS 2.0" search result heading. To the extent that Complainant is asserting a trademark claim based on its use of the Internet address <www.business2.com>, this reference is to the entire address that it uses as a subheading to "BUSINESS 2.0" on its website home page. There is no basis for independently viewing "BUSINESS2" as a mark since Complainant is not using the term in that limited form for its advertising and promotion. Complainant has not demonstrated independent common law trademark rights in "BUSINESS2".
Respondent has registered the domain name <business2.biz>. That domain name is not "identical" to "BUSINESS 2.0" within the meaning of paragraph 4(a)(i) of the STOP Policy. The disputed domain name reflects a combination of descriptive terms that have a clear meaning in the English language. "Business to business" is a common way of referring to transactions between business entities. "B2B" is a short form of the same reference that came into common usage over recent years, and <business2.biz>, as a combination term, is a way of referencing "Business to business" and "B2B". The trademark "BUSINESS 2.0" is not identical to the domain name <business2.biz>.
Complainant asserts that it is unable to register the domain name <business2.0.biz> because of Internet addressing limitations, and so must use some other format for its domain name, such as the disputed domain name <business2.biz>. However, the limitations imposed by Internet addressing rules are not a reason to oust Respondentís choice of a domain name which is not identical to a trademark in which Complainant has rights.
The Panel is not authorized by the STOP Policy to consider whether "BUSINESS 2.0" and <business2.biz> are confusingly similar. An analysis of confusing similarity would take into account a range of factors not considered in relation to identicalness.
Complainant has failed to prove that Respondent registered a domain name identical to a trademark or service mark in which it has rights. There is no reason for the Panel to make further determinations regarding other elements of the STOP Policy. The Panel declines to direct the registrar to transfer the disputed domain name.
Complainant, Time Inc., has failed to establish that the disputed domain name, <business2.biz>, registered by Respondent, DomainDiscover, is identical to a trademark or service mark in which Complainant has rights within the meaning of paragraph 4(a)(i) of the STOP Policy. The Panel therefore does not direct the registrar to transfer the disputed domain name.
Frederick M. Abbott
Dated: July 10, 2002