WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IBUY Stores Inc. v. Registration Private, Domains by Proxy, LLC / Albert Houllou, IBUY.com
Case No. D2015-1246
1. The Parties
Complainant is IBUY Stores, Inc. of Harriman, New York, United States of America ("United States" or "U.S."), represented by Steven L. Rinehart Esq., United States.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Albert Houllou, IBUY.com of Brooklyn, New York, United States, represented by Gearhart Law LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <ibuy.com> (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2015. On July 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on August 10, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2015. The Response was filed with the Center on August 31, 2015.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 8, 2015. The Panel finds that it was properly constituted. 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
Complainant is the owner of a United States federal registration for IBUY, Reg. No. 4,674,150, in Class 7, for blades for power saws; circular saws; machine tools, namely, vices for use in the precision clamping of work pieces; power tools, namely tile saws; and wood sawing machines. Complainant filed its application for trademark registration on January 9, 2014, claiming first use in commerce of this trademark as of at least July 15, 2001. The registration was issued on January 20, 2015.
Respondent filed an application to register IBUY.COM on May 14, 2008, Serial Number 77/474,187, in Class 35 for an online retail store featuring consumer electronics and camera equipment. The application indicated a first use in commerce as of at least January 1, 2008. The U.S. Patent and Trademark Office ("USPTO") issued an office action in which it refused registration on the grounds that (1) the mark was confusingly similar to a third party's B BUY.COM and BUY.COM registrations, and (2) IBUY is merely descriptive for online retail store services. Respondent did not respond to the office action, and the application was therefore deemed abandoned on March 12, 2009 (as a matter of law, such abandonment is without prejudice).
On August 27, 2015 (after the filing of the Complaint in this proceeding), Respondent filed a new application to register IBUY (in standard character letters), Serial Number 86/739,502, in: (i) Class 39, for Import and export cargo handling services; import and export handling services, namely in the field of consumer electronics and luxury electronic brands; import and export services, namely, transportation of the merchandise of others in the nature of consumer electronics, with a first use in commerce date of July 4, 2007; (ii) Class 35, for online retail service store featuring a wide variety of consumer goods; computerized online ordering services featuring a wide variety of consumer goods; providing a searchable online advertising guide featuring the goods and services of other online vendors; providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users, with a first use in commerce date of July 4, 2007; and (iii) Class 42, for providing a web‑based non-downloadable Internet-based software application for retail and ordering services for a wide variety of consumer goods; providing a based non-downloadable Internet-based software application for creating and accessing user-posted ratings, reviews, and recommendations on products and services for commercial purposes, as an intent to use application. This application has not yet been examined by the USPTO.
Also on August 27, 2015, Respondent filed a trademark application for a stylized version of its IBUY mark, Serial Number 86/739,511, in: (i) Class 39: Import and export cargo handling services; import and export handling services, namely in the field of consumer electronics and luxury electronic brands; import and export services, namely, transportation of the merchandise of others in the nature of consumer electronics, with a first use in commerce date of July 6, 2007; (ii) Class 35: online retail service store featuring a wide variety of consumer goods; computerized online ordering services featuring a wide variety of consumer goods; providing a searchable online advertising guide featuring the goods and services of other online vendors; providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users, with a first use in commerce date of July 6, 2007; and (iii) Class 42: providing a web-based non-downloadable Internet-based software application for retail and ordering services for a wide variety of consumer goods; providing a based non-downloadable Internet-based software application for creating and accessing user-posted ratings, reviews, and recommendations on products and services for commercial purposes, as an intent to use application. This application also has not yet been examined by the USPTO.
Respondent registered the Domain Name in 2007 and it currently resolves to a parking page.
5. Parties' Contentions
(i) Factual Assertions
Complainant characterizes itself as a retailer of commercial and consumer goods in the United States and in the British Commonwealth Countries. It contends it began using the trademark IBUY in 2001 and has spent hundreds of thousands of dollars marketing and delivering IBUY products since then.
Complainant contends it established a website, "www.ibuystores.com", in 2008 and has made use of the IBUY trademark on this website since its inception. Complainant describes itself as having invested heavily in local and online marketing campaigns, including cost-per-click advertising, banner advertising, targeted email campaigns, mass mailers, and radio and print advertisements, among other methods, with respect to the website. Complainant asserts the website has been a commercial success that employs many individuals and generates millions of dollars in annual sales.
Complainant asserts it has continuously marketed its goods using the mark IBUY since 2001. It also contends the mark IBUY: (i) has been distinctive and well-known since 2001; (ii) is recognized by individuals and other entities as distinctive; (iii) is associated with Complainant in the mind of the purchasing public; (iv) is well-known and associated with Complainant in the United States; (v) has become famous; and (vi) has acquired secondary meaning.
(ii) Identical or Confusingly Similar
Complainant alleges the Domain Name is confusingly similar to Complainant's registered mark IBUY because it wholly encompasses such mark.
(iii) Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name and is not making a legitimate noncommercial or fair use of the Domain Name. Complainant contends Respondent had not been commonly known by the Domain Name prior to accrual of Complainant's trademark rights.
(iv) Registered and Used in Bad Faith
Complainant alleges Respondent registered the Domain Name is in bad faith. It asserts Respondent had knowledge of Complainant's mark and of Complainant's rights when it registered the Domain Name in 2012 (which is the date of registration claimed by Complainant). It asserts Respondent unlawfully registered the Domain Name: (i) to deprive Complainant of its use; and (ii) to benefit from the sale of services similar to Complainant's using Complainant's registered mark IBUY. It additionally alleges Respondent sought to unjustly enrich itself on the Domain Name by misappropriating Complainant's goodwill and creating a likelihood of confusion with its mark.
Complainant additionally contends Respondent has only ever made passive use of the Domain Name and has not carried out any legitimate business on the Domain Name. It asserts Respondent registered the Domain Name for the purpose of confusing Internet users seeking Complainant's services and to prevent Complainant from reflecting its trademark in the Domain Name. Complainant also alleges Respondent registered the Domain Name to: (i) deprive Complainant of the use of the Domain Name and (ii) financially benefit from the sale of the Domain Name to Complainant.
(i) Factual Assertions
Respondent characterizes himself as a successful entrepreneur for twenty years in the field of retail, online retail, and import/export of consumer goods and electronics.
Respondent contends he purchased the Domain Name as part of a suite of domain names from IBuyDigital.com under an Asset Purchase Agreement (the "Agreement") on June 27, 2007 for USD 675,000. He states he purchased these assets through his solely held limited liability company, ANSRA, LLC, and immediately transferred ownership of the assets, including the Domain Name, from the LLC to himself. Respondent contends he has held the Domain Name since such time.
Respondent contends IBuyDigital's earliest common law usage of IBUY dates to August 11, 2001 on the website "www.ibuydigital.com". He further contends he purchased these common law rights under the Agreement, which states the Buyer purchased certain websites and "any and all intellectual property and other proprietary rights associated therewith existing at any time under the laws of any jurisdiction, if any, including, without limitation, any proprietary software, trademark, service mark, trade name brand name, and/or copyrights relating thereto, and all registrations and pending applications to register such rights. Respondent asserts he has continued common law use of the IBUY mark on two other sites he purchased from IBuyDigital in the Agreement, "www.ibuyplasma.com" and "www.ibuydigital.com". He contends he has performed online retail services, such as selling, importing and exporting of consumer goods and electronics, under the IBUY mark on these sites since 2007.
(ii) Identical or Confusingly Similar
Respondent asserts the Domain Name is not confusingly similar to Complainant's mark. He contends his sites do not sell products similar to Complainant's and states he has no intention of selling any such products on the Domain Name. Respondent additionally states his goods are so unrelated to Complainant's it is unlikely they will be marketed through the same stores or channels of distribution.
Respondent additionally states Complainant has not registered the IBUY mark in a class covering online retail or physical store sites. He alleges that, as such, he is unlikely to confuse customers when he launches the Domain Name as an online marketplace. Respondent contends consumers are sophisticated enough to recognize that a seller of power saws and related products is not in the same line of business as an online retailer of consumer electronics.
(iii) Rights or Legitimate Interests
Respondent asserts he has and continues to maintain rights and a good faith legitimate interest in the Domain Name, namely to use the IBUY mark in the online retail industry and to create an online marketplace at the Domain Name. He contends he has neither deprived nor attempted to deprive Complainant of its use of the IBUY mark. Respondent also asserts he has: (i) expended considerable capital, time and preparations in developing the online marketplace at the Domain Name; and (ii) has shown demonstrable preparations to create an online marketplace at the Domain Name. He additionally contends he has consistently refused to sell the Domain Name and has taken steps he has taken to prepare and develop the online marketplace, which evidence his legitimate interest in the Domain Name.
(iv) Registered and Used in Bad Faith
Respondent asserts he did not register the Domain Name in bad faith. He contends he did not register the Domain Name in order to prevent the Complainant from reflecting the IBUY mark in a corresponding domain name. Respondent asserts he purchased the Domain Name to continue using the IBUY brand as it has existed since 2001 at "www.ibuyplasma.com" and "www.ibuydigital.com" and to prepare for the launch of an online marketplace at "www.ibuy.com".
Respondent also contends he did not register or acquire the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to Complainant for a profit. He asserts that, since purchasing the Domain Name in 2007, he has intended to use it to create an online marketplace to rival <amazon.com>. Respondent further contends the Domain Name is not for sale. He states he has received multiple unsolicited offers to purchase the Domain Name over the course of more than six years and has consistently rejected such offers (and has submitted examples of such offers and rejections).
Respondent further contends he did not register the Domain Name primarily to disrupt Complainant's business. He contends that he and Complainant are in wholly separate businesses with contrasting industries and customer bases and are not competitors. Respondent also asserts that he had no knowledge of, and no bad faith intentions towards, Complainant or its mark. He contends he did not have any knowledge of Complainant's use of the IBUY mark before Complainant filed its trademark registration for IBUY in 2014. He also says that he owned the only pending trademark application or registration for IBUY with the USPTO when he filed a trademark registration for IBUY.COM in May 2008.3 Respondent further asserts he did not intentionally register the Domain Name to create a likelihood of confusion with Complainant's mark for financial gain. He says he has not used the Domain Name to profit on Complainant's goodwill. Respondent also contends he has not benefitted from the sale of services similar to those of Complainant using Complainant's mark. He says he plans to use the Domain Name to launch an online marketplace and use the IBUY mark in the same manner he has used it since 2007.
6. Discussion and Findings
The burden that Complainant must meet under paragraph 4(a) of the Policy is to prove, by a preponderance of the evidence:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of a United States federal trademark registration for the mark IBUY. Complainant's registration on the Principle Register is prima facie evidence of the mark's validity. 15 U.S.C. § 1057(b); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.1. Accordingly, the Panel finds Complainant has trademark rights in IBUY.
The Domain Name is identical to Complainant's trademark. As such, the Panel determines the Domain Name is identical to Complainant's trademark and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, the use by the respondent 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
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent applied to register the mark IBUY.COM in 2008, prior to Complainant's trademark application to register for IBUY. 2 Although that application was later refused, the trademark application is evidence of Respondent's intention to use the designation IBUY for a legitimate interest at that time. Indeed, since then, Respondent has used the IBUY designation to sell consumer electronics on the websites "www.ibuydigital.com" and "www.ibuyplasma.com". 3
Complainant asserts, though, that Respondent's registration of the Domain Name was not legitimate because Complainant had prior trademark rights. Although Complainant asserts that it has used the IBUY mark for saws and blades and related goods since 2001, it has not submitted any evidence that establishes that it had the exclusive right to use the IBUY mark as of 2007 (when Respondent acquired the Domain Name) or that Respondent must have been aware of the mark at the time Respondent acquired the Domain Name. Moreover, the Panel notes that there is no evidence that Respondent is selling or intends to sell saws, blades, fireplaces, fireplace parts, grill parts, barbeques, or construction parts and materials, which are the goods covered by Complainant's registration and/or sold by Complainant on its website. Thus, even if Complainant had trademark rights in IBUY for saws, blades and related goods at the time that Respondent registered this Domain Name, that would not make Respondent's use of IBUY for different goods (e.g., consumer electronics) infringing. Thus, Complainant has not succeeded in establishing, by a preponderance of the evidence, that Respondent did not make legitimate uses of the IBUY mark over the last seven years.
That the USPTO has refused to register Respondent's mark on the ground that it is merely descriptive provides further support for Respondent's argument that it has a legitimate interest in the Domain Name. If Respondent is using the term IBUY descriptively for a website at which consumers may buy products, and given that Respondent does not appear to be trying to trade off of Complainant's trademark rights by selling or linking to competitive goods, that is a use that reflects a legitimate interest in the Domain Name.
The Panel finds on this record that Complainant has failed to establish that Respondent lacks any rights or legitimate interests in the Domain Name, and that Complainant has therefore failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances which are evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
Respondent provides evidence that he purchased the Domain Name in 2007, as part of a suite of domain names, prior to Complainant's establishment of its website (in 2008) or registration (in 2015) of its IBUY mark. Had Respondent conducted a trademark search at the time, Respondent would not have found any federal registration reflecting Complainant's mark because Complainant did not apply to register its mark until 2014, nor would Respondent have been able to view Complainant's website at that time because the site was not yet in use in 2007. Complainant also has not submitted evidence that its mark was well known (either then or now, Complainant's unsupported conclusory allegation that its mark was well known and has become famous notwithstanding) at the time such that Respondent would or should have been aware of it. These facts suggest that Respondent likely was not aware of Complainant's rights in the mark IBUY at the time he acquired the Domain Name in 2007, and thus could not have acquired the mark with a bad faith intention against Complainant and its mark.
Nor is there evidence that Respondent has used the Domain Name in bad faith. For example, Respondent presents evidence that he has repeatedly refused to sell the Domain Name since he purchased it in 2007. Complainant presents no evidence Respondent has ever attempted to sell, rent or otherwise transfer the Domain Name to Complainant.
Complainant additionally presents no evidence that Respondent registered the Domain Name to prevent it from reflecting the IBUY mark in a corresponding domain name. Contrarily, Complainant's current website, "www.ibuystores.com", reflects this mark.
Respondent has also stated that he intends to use the Domain Name to sell his own goods, which do not compete with Complainant's goods, although he has not presented any evidence of demonstrable preparations to do so. However, Complainant has presented no evidence that Respondent has intentionally attempted to attract users to its website or other online location by creating a likelihood of confusion with Complainant's mark.
As such, the Panel finds on this record that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith, and Complainant thus has failed to satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
David H. Bernstein
Date: September 22, 2015
1 Pursuant to paragraph 10 of the Rules, the Panel has searched the USPTO records and determined that this statement in not correct. At the time of Respondent's application in May 2008, there was an active registration for IBUY for "Insurance agencies in the field of home, accident, life, property and casualty, health, annuity, disability, travel and automobile insurance; insurance brokerage services, namely, facilitating collection of client information and purchasing of insurance products via a global computer network"; that registration was later cancelled in December 2010. There also were two pending applications for IBUY: One was for "Internet website for providing information, shopping, prices, price comparisons, links, reviews, and comments on a wide range of consumer products and services" (that application was abandoned in October 2008); the second was for "Advertising and information distribution services, namely, providing classified advertising space via the global computer network; providing consumer product and service information via the Internet; promoting the goods and services of others over the Internet; providing an online business information directory on the Internet" (that application was abandoned in June 2010). That these various IBUY marks have coexisted during the years (and continue to coexist today) suggests that a number of IBUY marks can coexist for different goods and services. See, e.g., U.S. Reg. No. 4,758,931 for IBUY OFFICESUPPLY for "On-line retail store services featuring office supplies, office machines, and office furniture" (first claimed used as of December 2, 2007); U.S. Reg. No. 4,297,676 for IBUY for "On-line ordering services featuring short-sleeved or long-sleeved t-shirts, pants, hats or sweatshirts" (first claimed use as of November 9, 2004); U.S. Reg. No. 4,280,415 for IBUY for "promoting the goods and services of others by providing a website featuring discounts on the goods and services of others" (first claimed use as of September 20, 2011); U.S. Reg. Nos. 3,789,578 and 3,816,692 for IBUY REALTY for "real estate agency, real estate brokerage" (first claimed use as of December 1, 2008).
2 Respondent also notes that he applied for trademark registrations for IBUY.COM in August 2014. Those applications, though, were filed after the commencement of this action; moreover, because they have yet to be examined by the USPTO (which may find that these marks are also merely descriptive), these applications do not provide any evidence of Respondent's trademark rights.
3 Because Respondent has shown use of the Domain Name for the bona fide offering of goods prior to the commencement of this proceeding it is unnecessary for the Panel to consider Respondent's alternative claim that he also has made preparations to use the Domain Name for an online marketplace. If the Panel were to reach this issue, though, the Panel would rule that Respondent has not established that he has made demonstrable preparations to use the Domain Name for an online marketplace. Although Respondent states that he "has expended considerable capital, time and preparations in developing what the online marketplace will look like as well as how it will function," Respondent has not submitted documentary evidence sufficient to show demonstrable preparations. The Panel also need to consider whether Respondent is entitled to claim use of the mark IBUY since 2001, based on use by the prior owner of the Domain Name, since Respondent's use since 2008 is sufficient to establish bona fide use prior to the commencement of this proceeding.