WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Business Financing, Incl v. Registration Private, DomainsByProxy.com / Mark Venetti, NewAgeSystemsHouse and The Business Doctor of North Jersey
Case No. D2021-2007
1. The Parties
Complainant is Business Financing, Inc., United States of America (“United States”), represented by Remenick PLLC, United States.
Respondent is Registration Private, DomainsByProxy.com, United States / Mark Venetti, NewAgeSystemsHouse, United States and The Business Doctor of North Jersey, United States, represented by Budzyn IP Law LLC, United States.
2. The Domain Name and Registrar
The disputed domain name <businessdoctornj.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 17, 2021.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Response was filed with the Center on September 14, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 14, 2021. 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, based in the State of Michigan, provides accounting and advisory services to business clients. Although not mentioned in the Complaint, Complainant operates a website at the domain name <thebusinessdoctor.com>.
Complainant holds a registered trademark for THE BUSINESS DOCTOR, namely, United States Patent and Trademark Office (“USPTO”) Reg. No. 3,831,399 in connection with “accounting services” and “advisory services relating to business management and business operations.” This mark was registered with the USPTO on August 10, 2010, and the date of first use in commerce of this mark is stated to be November 1, 1999. The registration disclaims any use of the word “business” apart from as shown in the trademark.
Complainant provides no information about the size of its business or its client base, the extent of its marketing of the trademark THE BUSINESS DOCTOR, the extent of consumer recognition of the trademark, or whether the mark has received any recognition in the media.
Respondent is a business consulting company incorporated in the State of New Jersey on May 20, 2012, under the name The Business Doctor of New Jersey.
The Domain Name was registered on June 3, 2012. The Domain Name resolves to a website where Respondent offers business consulting services under the name “The Business Doctor of North Jersey”. The web page states, “Working with a business coach can be a game changer.” The web page then states that Respondent can assist businesses with a sales strategy, financing, cash flow issues, marketing, and staffing versus outsourcing issues. Annexed to the Response are screenshots showing that Respondent’s commercial website has been offering such services since 2012.
According to a sworn statement by Respondent’s principal, she was unaware of Complainant or its trademark at the time Respondent registered the Domain Name in June 2012. In addition, Respondent’s counsel submitted a sworn declaration stating that he performed a Google search for the term “business doctor” and that, while Respondent’s website appeared on the first page of the search results, there is no reference to Complainant on the first 20 pages of the search results.
On August 14, 2019, Complainant sent Respondent a letter advising of its THE BUSINESS DOCTOR trademark and referring to the Domain Name and Respondent’s corresponding website. Complainant invited Respondent to get in contact with Complainant. It appears that Respondent did not reply. On July 30, 2020, Complainant sent a chaser letter to Respondent.
On August 26, 2020, Respondent’s counsel replied to Complainant’s letters. Through counsel, Respondent asserted that Complainant’s trademark THE BUSINESS DOCTOR disclaimed the word “business,” and that there was widespread third-party use of the terms “business” and “doctor” in connection with providing business consulting services. Respondent’s counsel did offer to change Respondent’s website such that references to “Business Doctor” were accompanied by “North Jersey.”
On May 11, 2021, Complainant – now through counsel – wrote to Respondent’s counsel and demanded that Respondent cease using the mark THE BUSINESS DOCTOR. This letter, however, makes no reference to ownership of the Domain Name itself.
On May 20, 2021, Respondent’s counsel wrote a letter apologizing for Respondent’s failure to change its website content to remove references to “Business Doctor” unless accompanied by “North Jersey.”
This was apparently the last communication between the Parties before the Complaint in this proceeding was filed.
5. Parties’ Contentions
Based on the facts set out above, Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.
Respondent asserts that it has a legitimate interest in the Domain Name, which it has owned and used for nine years in connection with a legitimate business. Respondent also denies having registered or used the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark THE BUSINESS DOCTOR through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The lack of the word “the” is inconsequential, and the addition of the geographically descriptive initials “nj” (here for North Jersey) does not prevent a finding of confusing similarity between the Domain Name and Complainant’s registered trademark, which remains recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not address this issue, given its findings and conclusions below in the “bad faith” discussion.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, on the record presented here and on a balance of probabilities, that Complainant has failed to carry its burden of proving that Respondent registered and used the Domain Name in bad faith. The Panel notes that Respondent’s principal has submitted a sworn affidavit in this proceeding in which she denies having had any knowledge of Complainant or its THR BUSINESS DOCTOR trademark at the time the Domain Name was registered in June 2012.
The Panel finds that sworn statement plausible. First, Complainant’s mark was registered only 19 months before Respondent formed a company and registered the Domain Name, which essentially reflects the company name. There is no evidence in the record to suggest that Complainant’s trademark was sufficiently well known that a denial of knowledge by Respondent would strain credulity. On the contrary, indeed, Respondent provided a Google search result which tends to indicate that Complainant’s mark, while registered, does not enjoy such widespread renown as to call the sworn statement into serious question. The Panel also notes in this regard Respondent’s evidence of significant third-party use of the terms “business” and “doctor” in connection with the offering of business consultancy services.
As such, while Complainant owns a registered and incontestable trademark, the federal trademark laws in the United States are not necessarily coextensive with the three elements required for a Domain Name transfer under the UDRP. For instance, the Lanham Act generally looks to actual or likely confusion and possibly irrespective of knowledge/targeting. In the latter setting, a successful complainant generally must carry its burden of proving that the respondent more likely than not had the complainant’s trademark in mind when registering the subject domain name.
The Panel expresses no view about a possible trademark infringement claim here, but, again, such a claim is not at issue in a UDRP case.
In sum, absent a finding that Respondent more likely than not had Complainant’s THE BUSINESS DOCTOR trademark in mind when registering the Domain Name, the Complaint must fail.
Complainant has not established Policy paragraph 4(a)(iii).
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: October 28, 2021