WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIS Ltd. v. Bis S.C.P.
Case No. DBIZ2002-00255
1. The Parties
In this proceeding, Complainant is BIS Ltd., a limited liability company that is registered in England and Wales, with a principle place of business at The Baltic Exchange, 38 St Mary Axe, London, EC3A 8BH, United Kingdom.
Respondent is Bis S.C.P., whose address is Consell De Cent 322, Baixos, Barcelona, E-08007, Spain.
2. The Domain Name and Registrar
The domain name in dispute is <bis.biz>.
The registrar for the disputed domain name is Nominalia Internet S.L., Pg. Lluís Companys, 23, 08010 Barcelona, Spain.
3. Procedural History
This case shall be decided pursuant to the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. on May 11, 2001 (the STOP Rules), and the WIPO Arbitration and Mediation Center’s Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the Supplemental STOP Rules).
The Complaint was filed on May 21, 2002, by e-mail, and on May 27, 2002, in hard copy.
On June 4, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On June 18, 2002, the Center informed the Complainant that the registrar for the disputed domain name was Nominalia Internet SL rather than Neulevel as the Complainant had stated in its Complaint. On June 19, 2002 the Complainant amended its Complaint by e-mail to the Center correcting the registrar name, with a copy to the Respondent.
On June 26, 2002, after receiving no response from Respondent, the Center sent Respondent a Notification of Respondent Default by e-mail.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 8, 2002, and the Center proceeded to appoint the Panel on July 15, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is July 29, 2002.
4. Factual Background
Complainant is a British company which provides internet and telecommunications services.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. The Parties’ Contentions (Summarized)
-Complainant is a British company which provides internet and telecommunications services, including e-mail, hosting, collaboration and telephone services.
-Complainant registered under the name "BIS Limited" with the Registrar of Companies for England and Wales on August 4, 2000 (see certificate in Annex 3 to the Complaint).
-Before August 4, 2000, Complainant was known as Baltic Internet Services because Complainant's customers were members of the Baltic Exchange. However, Complainant has been commonly known by customers and referred to by others as "BIS" for convenience for at least 3 years. Complainant has built up substantial goodwill and a reputation as "BIS" over the last 3-4 years in the telecom, computing and messaging industries.
-The disputed domain name is identical to a trademark or service mark in which the Complainant has rights. Respondent’s domain name is identical to the Complainant's full name, "BIS."
-Respondent has no rights or legitimate interests in respect of the domain name. Respondent has not used the disputed domain name since its registration. Respondent has established no goodwill in association with the name "BIS." Respondent does not trade as "BIS," but apparently as "B.i.s."
-The disputed domain name was registered or is being used in bad faith.
Respondent did not file a response.
As the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail, the Panel is convinced that Respondent has been notified appropriately with respect to these proceedings and that due process has been satisfied.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name, <bis.biz>, transferred to it, Complainant must prove the following (STOP, ¶ 4(a)(i-iii):
-the domain name is identical to a trademark or service mark in which Complainant has rights; and
-Respondent has no rights or legitimate interests in respect of the domain name; and
-the domain name was registered or is being used in bad faith.
Complainant has supplied the Panel with no evidence that Complainant owns registrations of the trade or service mark "BIS" in any country.
Prior panels ruling under STOP have found that a complainant may establish rights in a mark at common law. (See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., Nat. Arb. Forum FA 102795 (February 12, 2002)). The panel in the cited case noted that the complainant "demonstrated common law rights…through its continuous and exclusive use of the mark in relation to…its products."
However, even without response, Complainant's contentions and the evidence submitted in this case do not plainly satisfy those elements in demonstrating common law rights. For example, Complainant admits that, as recently as two years ago, its services were not primarily identified with the name "BIS" but with "Baltic Internet Services" by some, if not most, of the public in its service areas. Also, Complainant contends that it has built significant goodwill and reputation under the name "BIS," but has provided the Panel with only a self-serving brochure to substantiate that assertion.
Based upon this spare record, the Panel cannot conclude that Complainant has established rights in the mark "BIS" at common law. (see also Vietnam Venture Group, Inc. v. Cosmos Consulting gmbh, Nat. Arb. Forum FA 102610 (Februay 6, 2002), where the panel dismissed the Complaint because (1) the complainant did not hold a registered trademark, and (2) the complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among internet users that the mark identified goods or services unique to the complainant).
In accordance with the foregoing and STOP, ¶ 4(a)(i), the Panel finds that Complainant has failed to sustain its burden of proof in showing that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.
To obtain a transfer of the disputed domain name, Complainant must prevail under each subsection of STOP, ¶ 4(a). Thus, the Panel does not need to determine whether (1) Respondent has rights or legitimate interests in the disputed domain name (¶ 4[a][ii]), or (2) Respondent registered or is using the disputed domain name in bad faith (¶ 4[a][iii]).
The Panel has found that Complainant failed to carry its burden of proof to establish that the disputed domain name, <bis.biz>, is identical to a trademark or service mark in which Complainant has rights per STOP at ¶ 4(a)(i). Therefore, pursuant to STOP, 4(i), and STOP Rule 15, the Panel orders that the disputed domain name, <bis.biz>, remain registered to Respondent, Bis S.C.P.
Because the Panel did not determine in this proceeding that Respondent has rights or legitimate interests in the disputed domain name, <bis.biz>, per Rule 15(e), subsequent complaints against this domain name will be permitted.
Dennis A. Foster
Dated: July 30, 2002