WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bluwire Group LLC v. Jeffrey Miller, Vivid Technology, Inc.

Case No. D2016-0919

1. The Parties

The Complainant is Bluwire Group LLC of Palm Beach Gardens, Florida, United States of America, internally represented.

The Respondent is Jeffrey Miller, Vivid Technology, Inc. of Naples, Florida, United States of America, internally represented.

2. The Domain Names and Registrar

The disputed domain names <bluwire.co>, <bluwire.com>, <bluwire.info> and <bluwire.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2016. On May 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2016, 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 Respondent filed an email communication with the Center on May 9, 2016. The Complainant filed an amended Complaint on May 30, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2016. On June 9, 2016, the Respondent filed multiple email communications with the Center. The Respondent filed an additional email communication on June 13, 2016. On June 30, 2016, the Center notified the parties of the commencement of the panel appointment process. Subsequently, the Respondent filed email communications with the Center on July 1, 5, and 27, 2016, and August 1, 2016, and the Complainant filed email communications with the Center on July 26 and 29, 2016.¹

The Center appointed William R. Towns as the sole panelist in this matter on July 8, 2016. 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

The Complainant operates retail stores selling consumer electronics in airports and casinos in the United States. The Complainant uses the trademark BLUWIRE in connection with its retail store services, and is the owner of a United States trademark registration for the word plus design mark BLUWIRE, U.S. Reg. No. 3805863, issued by the United States Patent and Trademark Office (USPTO) on June 22, 2010, as reflected in the logo below.² The mark was registered for use with “retail store services featuring cell phones, personal electronic equipment and accessories.”

The Complainant states that it has used the mark in commerce since December 2009. The BLUWIRE mark and logo is prominently displayed on the Complainant’s website at “www.shopbluwire.com”. According to the Complainant, its retail stores generated sales of over USD 10 million in 2015. The record before the Panel does not indicate whether the Complainant has registered or used other domain names incorporating “bluwire”.

The Respondent registered the disputed domain names <bluwire.co>, <bluwire.info> and <bluwire.org> on December 9, 2014, according to concerned Registrar’s WhoIs records. The Registrar’s WhoIs records for the disputed domain name <bluwire.com> indicate a “creation date” of May 10, 2007. The Complainant asserts that the Respondent registered <bluwire.com> on December 17, 2014.

The disputed domain names <bluwire.com> and <bluwire.co> resolve to a website for Bluwire Media Group, described as a division of Vivid Technology Inc. that provides web design and other web-related services. The Complainant has submitted a screen shot of the website captured on an earlier date, at which time the website was under construction. The content on the website under construction included the following: “We are bluwire Media offering creative solutions for every web-based project you can think of.”

In October 2015 the Complainant approached the Respondent and offered to purchase the disputed domain name <bluwire.com> for USD 1,000. The Respondent did not accept that offer, and subsequently registered several additional bluwire-formative domain names, following which the Respondent offered to sell all of his bluwire-formative domain names to the Complainant for USD 20,000. The Complainant thereafter brought this administrative proceeding under the Policy.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are identical to the Complainant’s BLUWIRE mark, asserting that the generic Top-Level Domain (“gTLD”) in each of the disputed domain names should be disregarded. The Complainant states that it operates multiple retail outlets, is one of the top United States airport retailers, and that its BLUWIRE mark is nationally recognized.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant notes that it established rights in its BLUWIRE mark long before the Respondent registered the disputed domain names. Further, the Complainant submits that the Respondent is not an authorized dealer of the Complainant’s BLUWIRE-branded products, and has not been licensed to use the Complainant’s BLUWIRE mark.

The Complainant asserts that it has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names, shifting the burden to the Respondent to rebut this presumption. The Complainant submits that there is no evidence that the Respondent has been commonly known by the disputed domain names, and no evidence that the Respondent has established trademark rights in the disputed domain names. Further, the Complainant states there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain names with a bona fide offering of goods or services, nor evidence that any legitimate noncommercial or fair use of the disputed domain names has been made by the Respondent.

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, its representative contacted the Respondent on October 27, 2015, notifying the Respondent of the Complainant’s use of <bluwire1.com> and <shopbluwire.com>, and offering to purchase the disputed domain name <bluwire.com> for USD 1,000. According to the Complainant, the Respondent then registered the additional domain names <bluwire1.co>, <bluwire1.info>, <bluwire1.org>, <bluwire1.net>, <shopbluwire.co>, <shopbluwire.info>, <shopbluwire.org>, and <shopbuwire.net>. The Complainant maintains that the Respondent on November 5, 2015 sought to sell to the Complainant all of the Respondent’s bluwire-formative domain names, including the disputed domain names, for the sum of USD 20,000. The Complainant submits that on November 25, 2015, the Respondent begin directing multiple bluwire-formative domain names to the pornographic website “www.playgirl.com”.

B. Respondent

The Respondent submits that the Complaint is unfounded. The Respondent asserts that the Complainant does not have trademark rights in BLUWIRE as the Complainant’s mark includes the image of an electrical plug and the additional words “stay connected”. Further, the Respondent asserts that the Complainant does not have the right to exclude others from using “Bluwire” in connection with goods or services unrelated to those offered by the Complainant. The Respondent relates that Bluwire Media Group is a division of the company Vivid Technology, and that significant resources have been invested in the “Bluwire” name. The Respondent points to an active website and “physical inventory” as evidence of the use of the disputed domain names in connection with a bona fide offering of web design and other web-related services.

The Respondent asserts that “blu” is a recognized abbreviation of “blue”, and provides evidence of such use in online dictionaries. The Respondent also provides some evidence of third-party use of “blu” or “blu”-formative terms such as Blu-Ray Disc, and other uses of “bluwire” or “bluewire” that are unrelated to the Complainant. The Respondent maintains that when he was first contacted by the Complainant’s representative inquiring about the availability of the disputed domain names, the Complainant’s representative acknowledged that “bluwire” was generic and that the Complainant had obtained a trademark registration only by incorporating the electric plug design, black and blue color scheme, and the additional words “stay connected.”

The Respondent relates that when first contacted by the Complainant he indicated he had no interest in selling the disputed domain names. According to the Respondent, the Complainant persisted in seeking to have the Respondent make an offer to sell the disputed domain names, threatening to bring cybersquatting or trademark infringement claims if he did not. The Respondent states that eventually got angry and told the Complainant’s representative he had invested a lot of time and money in the name and had at least USD 20,000 in it, and would consider an offer if made, but still did not want to sell.

With respect to the redirecting of domain names to the “www.playgirl.com” website, the Respondent offers the explanation that he was teasing a friend who was working on the Bluwire Multimedia Group project, that it was just a joke and that the redirecting took place for less than 48 hours.

The Respondent avers that he had no knowledge of the Complainant when registering the disputed domain names in December 2014, and that he bought the domain names at a premium. The Respondent insists that the sole reason for acquiring these domain names was the development of the Bluwire Multimedia Group project, and he reiterates that the Complainant does not have the exclusive right to use “bluwire”, that the term is generic, and that the Respondent is using “Bluwire” with a completely different line of business, and that no confusion is possible.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s BLUWIRE mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.³ The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain names are confusingly similar to the Complainant’s mark.

The Respondent argues that the disputed domain names are not confusingly similar to the Complainant’s mark because the mark contains design elements, relies on color, and includes the additional words “stay connected.” However, BLUWIRE is clearly the predominant portion of the Complainant’s mark. As the USPTO has often observed, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

The Respondent’s assertion that the Complainant’s mark is generic is misplaced. The Respondent appears to argue that the Complainant’s mark would not be registrable but for the inclusion of the design elements, but the Respondent provides no evidence that BLUWIRE is generic when used with the Complainant’s retail store services; nor for that matter can the Panel envisage any such evidence existing. Were the gTLDs to be disregarded, the disputed domain names could be regarded as identical to the word portion of the Complainant’s mark.⁴

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent without the Complainant’s authorization or consent has registered multiple disputed domain names, which are confusingly similar to the Complainant’s BLUWIRE mark. It is undisputed that the Respondent has not been commonly known by the disputed domain names.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it 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 consumers or to tarnish the trademark or service mark at issue.

The Respondent has not claimed to be commonly known by the disputed domain names, or submitted evidence demonstrating trademark or service mark rights in the disputed domain names. The Respondent does claim that prior to notice of the dispute he was using or making demonstrable preparations to use the disputed domain names with a website providing web design or other web-related services. It is clear from the record that that prior to such notice one or more of the disputed domain names resolved to a website under construction related to “web-based” projects, and that the Respondent has since launched a website that appears to offer web design services. The Panel entertains some doubt whether the mere posting of a website, without more (e.g., evidence of site visits and sales), suffices to demonstrate the Respondent’s asserted rights or legitimate interests in the disputed domain names. However, in view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain names under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.

No showing has been made by the Complainant that the BLUWIRE symbol is uniquely associated with the Complainant, or that the Complainant’s BLUWIRE mark has acquired the status of a well-known or famous mark. The Complainant’s mark is being used in what might be considered a targeted market – i.e., retail stores in airports selling personal electronic equipment and accessories to travelers. Further, it seems to the Panel to be a not unreasonable inference from the record that the Complainant after adopting the BLUWIRE mark in 2009 discovered there were already existing registrations for “bluwire” domain names, including <bluwire.com>; it is noted in that respect that the only domain name the Complainant sought to purchase from the Respondent in October 2015 was <bluwire.com>.

The primary rule in relation to domain name registrations is “first come, first served,” to which the UDRP provides a narrow exception. Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No.D2002-0658. The Complainant has not shown that the Respondent registered the disputed domain names in December 2014 with the Complainant’s BLUWIRE mark in mind.⁵ There is no convincing evidence that the Respondent was actually aware of the Complainant or the Complainant’s rights in the BLUWIRE mark. And even assuming arguendo that such knowledge was to be imputed to the Respondent, the record is conspicuously lacking in facts and circumstances from which the Panel might infer that the Respondent registered the disputed domain names with bad faith intent to profit from the goodwill associated with the Complainant’s mark. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra.

In the final analysis, the Complainant simply has not met its burden to show that the Respondent more likely than not registered the disputed domain names with bad faith intent to profit from or exploit the Complainant’s rights. From the time the Respondent registered the disputed domain names in December 2014 until being contacted by the Complainant in October 2015, there is no evidence of the Respondent’s use or attempts to use the disputed domain names to target the Complainant. There is no indication that the Respondent used the disputed domain names to attract Internet visitors to a pay-per-click parking page, or that the Respondent initiated contact with the Complainant seeking to sell the disputed domain names, or otherwise sought to sell the disputed domain names at auction. There is no indication that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business, or to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

As noted earlier, it appears to be undisputed that the Complainant initially approached the Respondent offering to purchase the disputed domain name <bluwire.com> for the sum of USD 1,000. What transpired after that initial contact is a matter of disagreement between the parties, but there is no dispute that the Respondent then registered additional bluwire-formative domain names and offered to sell all of his bluwire-formative domain names to the Complainant for USD 20,000. In addition, the Respondent redirected several of these domain names, including the disputed domain name <bluwire.com>, to the “www.playgirl.com” website.

The Panel finds troubling the Respondent’s opportunistic registration of the additional bluwire-formative domain names and his offer sell the domain names to the Complainant for USD 20,000, as well as his redirecting domain names to the “www.playgirl.com” website. There is little doubt in the Panel’s mind that the Respondent in doing so was motivated by and acted with animus. However, the additional bluwire-formative domain names are not the subject of this administrative proceeding, and apparently were released by the Respondent. And while the Panel considers the Respondent’s redirection of the additional bluwire-formative domain names as well as the disputed domain name <bluwire.com> to the “www.playgirl.com” website to be abusive, the Respondent’s recent behavior, however unseemly, lacks a sufficient nexus in the Panel’s opinion to support an inference that the Respondent was motivated by bad faith intent when acquiring the disputed domain names at issue December 2014.

Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist
Date: August 1, 2016

¹ The Rules do not contemplate supplemental submissions from the parties absent a request by the Panel. The Respondent on July 27, 2016, submitted an unrequested email communication to the Center. The Respondent’s submission is untimely, merely reiterates arguments already advanced, and consequently the Panel has given it no consideration in reaching a decision in this case. The Complainant’s response submitted to the Center on July 29, 2016, and the Respondent’s reply on August 1, 2016, neither of which have been requested by the Panel, also have not been considered by the Panel in reaching a decision.

² The Panel notes that the Complainant did not submit printouts from the USPTO’s Trademark Electronic Search System (TESS) demonstrating the Complainant’s registration of the BLUWIRE mark. The Panel visited the USPTO website and noted that the Complainant’s application for BLUWIRE was filed with the USPTO on July 27, 2009, and registered on June 22, 2010. The colors black and gray are claimed as a feature of the mark. The Panel upon visiting the USPTO website also learned that the Complainant on April 6, 2009 filed an application to register BLUWIRE for use with multiple electronic devices, but abandoned the application on December 28, 2009.

³ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.

⁴ Although gTLDs may in highly limited circumstances be considered when evaluating identity or confusing similarity, gTLDs are more typically disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

⁵ As discussed further below, however, it is clear that the domain names <bluwire1.co>, <bluwire1.info>, <bluwire1.org>, <bluwire1.net>, <shopbluwire.co>, <shopbluwire.info>, <shopbluwire.org>, and <shopbuwire.net> were registered in bad faith and merely to antagonize the Complainant. While this casts doubts on whether the Respondent comes to this dispute with clean hands, those domain names are not at issue here, and the circumstances of their registration do not speak to the motivation behind the Respondent’s registration of the disputed domain names. This does not foreclose the possibility of other actions taken by the Respondent subsequent to receiving notice of the dispute, which if probative of the Respondent’s intent when registering the disputed domain names might support a refiled complaint. See, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490. See also WIPO Overview 2.0, paragraph 4.4.