WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross
Case No. D2008-1010
1. The Parties
The Complainant is Thomas Pick aka Pick Inc., Boca Raton, Florida, United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.
The Respondent is EUROPREMIUM LTD, Elaine Maria Gross, Mahe, Seychelles, represented by CyberLaw P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name, <bs.com> (the “Domain Name”), is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008. On July 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Response was filed with the Center on July 30, 2008.
The Center appointed Tony Willoughby, Warwick Smith and Frederick M. Abbott as panelists in this matter on August 18, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant appears in the heading of the Complaint as a Mr. Thomas Pick and his wife, Chrisztina, claiming co-ownership of the Domain Name. The heading of the Complaint commences “Thomas Pick, aka Pink Inc., formerly known as Business Solutions Int'l, BS Communications and his wife and domain name co-owner, Chrisztina”.
For the purposes of this decision, the Panel proposes to treat Mr. and Mrs. Pick as one.
The evidence forming the basis for the Complainant's claim to trade mark rights is restricted to use of the term, “bs”, by Business Solutions Int'l and what appears to be a separate legal entity, BS Communications Kft., a company incorporated in Hungary.
The Domain Name was at one time registered in the name of Business Solutions Int'l. The evidence shows that on January 18, 1997 the Domain Name was connected to Business Solutions Int'l's website offering Internet marketing and web hosting services. The Domain Name was still held in the name of Business Solutions Int'l on June 15, 2003.
Subsequently, the Domain Name was acquired by a Mr. Hazan Ozdemir. The Panel has not been informed of the circumstances under which Mr. Ozdemir acquired the Domain Name, save that in 2005 the Complainant launched legal proceedings in Florida claiming that Mr. Ozdemir had stolen the Domain Name. That action was struck out for want of prosecution on June 15, 2007.
The Domain Name was acquired by the Respondent on September 26, 2007.
On November 19, 2007, the Respondent emailed the Complainant relating how and from whom the Domain Name was acquired and stating that the Respondent would be prepared to transfer the Domain Name to the Complainant for the $290,000 that the Respondent paid for the Domain Name. The email indicates that the Respondent was aware of the legal proceedings in Florida and the fact that it had been struck out for want of prosecution.
In June 23, 2008, in the course of a telephone conversation with the Complainant's lawyer, the Respondent expressed a willingness to accept $175,000 for the Domain Name, indicating on this occasion that that was the price paid by the Respondent for the Domain Name.
Currently, the Domain Name is connected to a website of the Respondent, the home page of which informs visitors that the site is under development.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to his common law trade mark, BS.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that he has at no time granted the Respondent any permission to use his trade mark. He asserts that the Respondent has never been known by the term, “bs”, and has never used the term in such a way as to acquire any relevant rights in respect of it. The Complainant claims that “the Respondent is passively holding the [Domain Name], at best as a web address”.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. In support of that contention the Complainant points to the following matters:
a the Respondent acquired the Domain Name with knowledge of the Complainant's trade mark;
b the Respondent's acquisition of the Domain Name was fraudulent – the company through whom the transaction is said to have been effected has no record of it;
c prior to acquiring the Domain Name, the Respondent conducted enquiries regarding the litigation in Florida over the Domain Name and was aware of the Complainant's allegations in relation to the ownership of the Domain Name;
d the information on the Registrar's WhoIs database is misleadingly inaccurate;
e the Respondent wrote to the Complainant a few weeks after acquiring the Domain Name and requested $290,000 for it and then more recently spoke to the Complainant by telephone and requested $175,000 for it; and
f at no time has the Respondent's website, which is connected to the Domain Name, featured a disclaimer to dispel any confusion with the Complainant.
In section IX of the Complaint the Complainant states that it strongly suspects that the Respondent is Mr. Ozdemir operating under an assumed name, Mr. Ozdemir being the person alleged by the Complainant to have stolen the Domain Name from the Complainant. However, the Complainant expressly informs the Panel in this section of the Complaint that he does not regard the legal proceedings against Mr. Ozdemir (see section IV above) to be of any relevance to this Complaint.
The Respondent contends that the Complainant has failed to establish that he has any common law rights in respect of the name BS. The Respondent also questions whether the Complainant is continuing to use the name, given that he identifies himself in the Complaint as “Thomas Pick a.k.a. Pick Inc. (formerly known as Business Solutions Int'l, BS Communications)”.
Further the Respondent contends that it has rights and legitimate interests in respect of the Domain Name. Prior to receiving any notice of the dispute the Respondent was incorporated as a company in the Seychelles. The Respondent has plans to use the Domain Name for a chat site (the name is an acronym for “bullshit”) or for a site devoted to British Sport. In the interim the Respondent is making active use of the Domain Name for electronic mail. This section of the Response concludes as follows:
“In sum, the domain name “<bs.com>” is a classic example of pre-development non-commercial use that in no way infringes upon any purported mark the Complainant may own. Respondent's personal and private use of the domain name “<bs.com>”, without any intent for commercial gain based on Complainant's purported marks, demonstrates that Respondent has rights and legitimate interests in the domain name.”
The Respondent denies that it acquired the Domain Name for the purpose of selling it at a profit. It contends that it made no attempt to sell the Domain Name to the Complainant. It was the Complainant who contacted the Respondent, not the other way round. It contends that it acquired the Domain Name for $175,000 and that in expressing a willingness to sell it to the Complainant for the same sum, it was doing no more than indicating a desire not to be out of pocket.
The Respondent recites the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and contends that none of them is applicable. The Respondent asserts that it acquired the Domain Name as a generic name, unaware of the Complainant's claimed trade mark rights and solely for the purpose of using it as set out above.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant claims common law rights in the service mark BS, “BS” being an acronym for “Business Solutions”, the name that he has used in the form, “Business Solutions Int'l”, and the acronym used by the Complainant in his Hungarian business/corporate name, “BS Communications Kft.”.
Certainly, the Domain Name (absent the generic domain suffix) is identical to the acronym/letters/mark, BS. However, the issue for the Panel is whether BS is a trade mark or service mark in which the Complainant has rights.
The Complainant cites prior panel decisions applying United States law for the proposition that “…. Under United States trade mark law, common law rights in a trade mark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trade mark owner.” (quoting from Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc., WIPO Case No. D2006-0703). The Complainant has not asserted that BS is inherently distinctive as a trade mark or service mark. It accepts the need to establish secondary meaning.
On this topic, the Complainant's claims are as follows, namely that:
a) he has used the term, “BS”, since 1996. The Complainant's support for this is a page dated January 18, 1997 from the Business Solutions Int'l website connected to the Domain Name. The page was printed up from the WaybackMachine and is said to be the earliest available record. It includes a sentence reading “We carefully chose the name BS.COM so that you will remember us.”
b) those with whom he trades know him and/or his business as “BS”.
c) the goodwill associated with the term, “bs”, has passed to his current business, which is named Pick Inc.
Two common methods of proving that one has established secondary meaning in respect of a particular trade mark are, (i) to demonstrate substantial use in the course of trade of the trade mark in question over a reasonable period (e.g. by producing details of sales and advertising expenditure and samples of one's business literature, advertisements etc.); and (ii) to produce evidence of third party use of the trade mark to identify the trade mark claimant's goods or services (e.g. correspondence from suppliers/customers, press cuttings etc.)
The Complainant has produced no evidence at all of the extent of his business. The Panel is aware that there was a Business Solutions Int'l webpage attached to the Domain Name in 1997 and is also aware that Business Solutions Int'l continued to be the registrant of the Domain Name until 2003, but the Panel has no knowledge of the extent of the trade conducted by Business Solutions Int'l, whether through that website or otherwise. The Panel has been provided with no sales information.
The Complainant contends that throughout that period Business Solutions Int'l was known by the acronym, “BS”. In fact, the Complainant contends that his use of the acronym to identify his Internet services business is “continuing through the present”. The evidence before the Panel comprises:
(i) ownership of the Domain Name from 1996/7 to 2003/4;
(ii) a webpage connected to the Domain Name in 1997 featuring prominently the name of Business Solutions Int'l and the reference quoted above to “BS.COM”;
(iii) an email dated July 9, 1999 to the Complainant from “Mike” at “verio.net”, a sentence in which reads: “We have reinstalled the Front Page extensions to your BS client from Europe”;
(iv) an email dated October 20, 1999 to the Complainant from “LZ” at “verio.net” containing references to the “BS server”;
(v) a letter dated March 23, 2000 to Mr. Pick at BS Communications Kft. from Planet Payment, which commences: “Thank you for your inquiry regarding our services. We would be very happy to work with BS Communications and its bs.com clients.” The letter goes on to detail the services provided by Planet Payment;
(vi) a November 2000 newsletter of the Budapest American Embassy Employees' Association identifying “Thomas Pick – BS Communications Kft.” as a corporate sponsor;
(vii) a letter dated April 30, 2001 to BS Communications Kft. from Caltiger.Com, an Indian ISP detailing the services on offer from that company;
(viii) an undated notice from Hewlett Packard addressed to BS Communications announcing a “One Day HP Bluestone Partner Event 27th June 2001 in Budapest” at which Hewlett Packard will be promoting its HP Bluestone product;
(ix) an undated three page printed form produced by BS Communication Kft., each page of which is headed “BS Domains”. The document is in the Hungarian language. The Panel does not know its purpose;
(x) various documentation showing that from at least 2003 to the present, the Complainant has used “bs” as part of the email address, “firstname.lastname@example.org”.
Most of the above references are not to “BS” per se, but to “BS” as part of the name, BS Communications or the Domain Name. The two clearest references to “BS” per se are in the 1999 emails from “verio.net”, one of the Complainant's service providers, but they fall well short of proof that the Complainant has trade mark rights in respect of the acronym “BS”. Additionally, none of the above demonstrate any continuing use of any name or mark featuring the letters “BS” beyond 2003 apart from the Complainant's “budapest.com” email address, which is proof of very little. The bulk of the evidence (such as it is) dates back to the period 1997-2001.
In the result the Complainant has failed to satisfy the Panel that the Complainant has any relevant trade mark rights in the trade mark or service mark, BS, or the trading names, Business Solutions Int'l and Business Communications, which the Complainant was using 5 years ago. Whether the Complainant ever had any such rights, the Panel is simply unable to assess on the basis of the evidence before it. The Complaint fails at the first hurdle.
C. Rights or Legitimate Interests
In light of the Panel's finding under B above it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
In light of the Panel's finding under B above it is unnecessary for the Panel to address this issue. Suffice it to say, however, that while there are unsatisfactory aspects of the Respondent's position (e.g. the inconsistencies over the sum paid for the Domain Name by the Respondent), and while it may well be that the Respondent acquired the Domain Name as an investment (i.e. with a view to selling it on), there is nothing before the Panel sufficient to indicate that the Respondent acquired the Domain Name with a view to unfairly exploiting the trade mark or service mark rights of the Complainant. The email from the Respondent to the Complainant in November last year (see section 4 above) indicates that the Respondent was aware of the Complainant's Florida proceedings regarding ownership of the Domain Name and that they had been struck out for want of prosecution. On the face of it, the Respondent had some justification for believing that if the Complainant had at one time owned relevant rights in respect of the Domain Name that was no longer the case.
The Panel recognizes that there may be more to the story behind ownership of the Domain Name, but if there is, the Panel has not been informed of it.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: September 1, 2008