The Complainant is Burn World-Wide, Ltd. d/b/a BGT Partners of Miami, Florida, United States of America (United States), represented by Brinkley, Morgan, Solomon, Tatum, Stanley, Lunny & Gordon, LLP, United States.
The Respondent is Banta Global Turnkey Ltd of Cork, Ireland and Chicago, Illinois, United States, represented by Nixon Peabody, LLP, United States.
The disputed domain name <bgt.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 29, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 29, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming:
(a) the disputed domain name was registered with it as the Registrar;
(b) the Respondent is listed as the registrant;
(c) the current contact details for the Respondent;
(d) the language of the registration agreement is English; and
(e) the disputed domain name was registered by the Respondent on September 23, 1998.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response April 21, 2010. The Response was filed with the Center April 21, 2010.
The Center appointed Warwick A. Rothnie, Matthew S. Harris and Harrie R. Samaras as panelists in this matter on May 7, 2010. 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.
The Respondent was founded in 1995, under its current name, when Banta Corporation acquired BG Turnkey Services, which had itself been formed in 1985.
Since that date, the Respondent has provided what are described as global supply chain management and outsourcing capabilities such as turnkey manufacturing to a wide range of companies including Microsoft, Hewlett Packard and Sun Microsystems.
It registered the disputed domain name in connection with this business in 1998.
In about 2000, the disputed domain name resolved to a website which was headed “Welcome to Banta Global Turnkey's Home Page”, but which redirected users looking for commercial information “on Banta” to go to the linked “Banta Corp web site.” From 2001 until 2007, the disputed domain name resolved to a website providing information about the Respondent, its business and services.
In addition to this type of use, the Respondent was also using (and continues to use) the disputed domain name to provide a number of “portals” and communications systems for its customers. For example, it provided a portal for its customers through “http://[subdomain_name].bgt.com”. This was (and is) a secure, password protected web portal that customers can use as an intranet for internal company dealings and an extranet for dealing with customers and suppliers. By this means, the Respondent's customers have access to document management facilities, knowledge management facilities and business reporting systems. The Respondent also uses the disputed domain name to provide a virtual private network for its employees to access remotely the corporate computer network, as a web-facing connection to the Respondent's mail server and various ftp servers.
The Complainant was formed in 2003 and has since at least September 2003 conducted business under the “fictitious” name “BGT Partners”. According to data submitted to the United States Patent and Trademark Office, the Complainant commenced using “BGT” as a trademark in April 2004.
In 2007 R. R. Donnelly & Sons Company (RR Donnelly) acquired Banta Corporation and as a result ownership of the Respondent. The Respondent has continued in existence as a separate legal entity and has continued operating its business since that acquisition.
Following RR Donnelly's acquisition of Banta Corporation, the disputed domain name resolves to a website which is in effect a mirror of the RR Donnelly website at “www.rrdonnelly.com”. This is a website promoting generally the businesses operated within the RR Donnelly group including at least some services which the Complainant contends infringe its trademark rights. In addition to this general website, however, the disputed domain name has continued to be used for the portal, web mail and ftp server services described above.
In 2009, the Complainant applied to register and is now the owner of U.S. Registered Trademark No. 3,679,095, “BGT” for interactive professional services and advertising services such as the creation, design and dissemination of advertising via the Internet.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar 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 domain name has been registered and is being used in bad faith.
The Panel considers these requirements below.
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant relies upon, and has established ownership of, U.S. Trademark No. 3,679,095 for BGT referred to above. The Complainant does not specifically rely on any unregistered or common law rights it might have in the trademark. For the reasons discussed below, however, ownership of such rights would not have affected the outcome.
As the Complainant contends, ownership of the registered trademark in the United States is sufficient to enliven this ground under the Policy. It does not matter whether the Complainant's trademark rights are shown to be owned in the same place as the Respondent is operating or whether the rights were acquired before or after the disputed domain name was registered as the second part of the inquiry requires a comparison between the proved trademark rights and the disputed domain name only. See for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420; KCTS Television Inc. v. Get-on-the-Web Limited, WIPO Case No. D2001-0154. Matters such as the dates rights were acquired or the places where they are registered and being used, however, may be relevant to the consideration under the other elements of paragraph 4(a) of the Policy.
Here, the only difference between the disputed domain name and the Complainant's trademark is the addition of the gTLD to the disputed domain name and the lower case lettering used for the disputed domain name.
On this second part of the inquiry, it is well established that the gTLD “.com”, being a functional requirement of the domain name system, can be disregarded. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
A trademark registration in block capitals would usually cover most typefaces and both upper case and lower case representations. So far as the Panel is aware, the domain name system does not distinguish between upper case and lower case lettering in domain names.
In any case, the Panel finds that the second level domain component of the disputed domain is identical to the Complainant's trademark.
In the circumstances of this case, the Panel turns next to the third requirement under paragraph 4(a) of the Policy.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith.
In this case, the disputed domain name was registered by the Respondent:
(a) some 11 years before the Complainant applied to register the trademark rights on which it relies,
(b) some 6 years before the Complainant contends it started using its trademark; and
(c) some 5 years before the Complainant even adopted its domain name.
In such circumstances, panels would normally find that the disputed domain name was not registered in bad faith and hence the Complaint must fail. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1; Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609.
The Complainant seeks to distinguish the present case by two arguments.
First, relying on RR Donnelly's acquisition of Banta Corporation and its subsidiaries including the Respondent, the Complainant contends that there has been “an informal transfer” of the disputed domain name. This it contends is sufficient for there to be a fresh registration of the disputed domain name citing ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785. It then relies on the resolution of the disputed domain name to the website mirroring the general RR Donnelly site, and which includes pages promoting services which the Complainant contends infringe its rights, to infer bad faith (re)registration and use.
This argument fails. It ignores the fact that the disputed domain name is still registered in the Respondent's name. That is, there has not in fact been a transfer of the disputed domain name. See also paragrah 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The decision in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., supra, does not help the Complainant. That was a case where the panel had to consider whether a change in registration details that involved a transfer into the name of an agent or a proxy of the original registrant constituted a fresh registration for the purposes of the Policy. In the present case there has been no change in registration details. Further, as a matter of fact the claims of “informal transfer” are unpersuasive. Although the disputed domain name is being used to mirror the website of the RR Donnelly group as a whole, the Respondent still exists as a separate legal entity and it appears the disputed domain name also is being used in connection with the Respondent's business activities. Therefore insofar as the Complainant is contending that the Respondent has no independent interest in the disputed domain name and is merely acting as an agent or proxy for a claimed “new owner”, RR Donnelly, that claim is not made out.
Secondly, the Complainant seeks to rely on the recent decisions City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (Mummygold) and Octogen Pharmacal Company, Inc, v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (Octogen) in which a well-respected panelist concluded that use of a domain name in bad faith may lead to a conclusion that the registration of the disputed domain name may be said to be retroactively in bad faith.
This Panel accepts that the way in which a domain name is used may be evidence leading to an inference that the disputed domain name was in fact registered in bad faith, but it is necessary nonetheless to be able to infer that the registration was in fact in bad faith.
That is, the Panel considers that the Policy requires a positive finding that both the registration and use were in bad faith. In this connection, the Panel endorses and adopts the reasoning of the learned Panel in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716 on this question, including also the learned Panel's reading of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. To the analysis in Camon S.p.A of the relevance of paragraph 2 of the Policy to the question of bad faith, the Panel would also refer to the similar analysis in TRS Quality, Inc v. Namespro.ca Private WHOIS, WIPO Case No. D2010-0393. Further, while they were apparently not necessary to the decisions in those cases, the Panel would also endorse and adopt the additional reasons for rejecting the Octogen/Mummygold approach given by the learned Panels in Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455 and TRS Quality, Inc v. Namespro.ca Private WHOIS, supra.
Having regard to the matters set out above, it is clear to the Panel that the disputed domain name was not registered in bad faith. On that basis, the Panel finds that the Complaint must fail having regard to the longstanding jurisprudence under the Policy.
Having reached that conclusion, it is not necessary for the Panel to express a view on whether or not the disputed domain name is also being used in bad faith.
In light of the Panel's finding under the “bad faith” requirement, it is not necessary for the Panel to consider whether the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent seeks a ruling that the Complainant has engaged in reverse domain name hijacking.
Such a finding would normally follow having regard to the longevity of the Respondent's registration of the disputed domain name, commencing many years before the Complainant adopted its trademark. See e.g. Dreamgirls, Inc. v. Dreamgirls Entertainment, supra.
A number of considerations, however, lead to the conclusion that such a finding is not warranted in the present case.
First, in addition to its use for the portal, web mail and ftp server services historically provided by the Respondent, the disputed domain name has resolved since 2007 to the website which mirrors RR Donnelly's general website which promotes a range of goods and services much wider than the activities historically conducted by the Respondent. This change was consequent on RR Donnelly acquiring Banta Corporation. It is arguable, as the Complainant contends, that the usage in relation to at least some aspects of that website may infringe the Complainant's rights. The Panel, however, expresses no concluded view on that question in view of its findings above. Nonetheless, the Respondent has not adequately explained why the disputed domain name resolves to such a general website rather than one related to the specific services comprised in the Respondent's business.
Moreover, the Complainant was not in a position to ascertain that the Respondent was continuing to provide its services through the disputed domain name as it would appear that knowledge of the specific subdomains being used by the Respondent, and possibly appropriate passwords, was required.
Thirdly, the Octogen and Mummygold cases could be seen as at least opening the door to the Complainant's claim.
In such circumstances, the Panel does not conclude that the Complainant brought the Complaint in bad faith.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Matthew S. Harris
Harrie R. Samaras
Dated: May 19, 2010