International Business Publishers, Inc. v. The Center for Business Intelligence, LLC

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

International

Business Publishers, Inc. v. The Center for

Business Intelligence, LLC

Case No.

D2001-0181

1. The Parties

The Complainant in this

administrative proceeding is International Business Publishers, Inc. whose principal

place of business is 9400 MacArthur, Irving, Texas 75063, USA. The Respondent

in this case is the Center for Business Intelligence, LLC whose contact information

is 500 W. Cummings Park, Suite 5200, Woburn, Massachusetts, 01801, USA.

2. The Domain Name and

Registrar

The domain names at issue

are <worldenergyonline.com> and <worldenergyonline.net> which are

registered with BulkRegister.com in Baltimore, Maryland, USA.

3. Procedural History

A Complaint was received

by e-mail by the World Intellectual Property Organization Arbitration and Mediation

Center (the "WIPO Center") on March 2, 2001.

On March 6, 2001, a Verification

Response was received from BulkRegister.com which served to: (1) confirm that

BulkRegister.com was in receipt of the notification of the domain name dispute;

(2) confirm that BulkRegister.com is the registrar of the domain names; (3)

confirm that the Center for Business Intelligence, LLC is the current Registrant

of the domain name; and (4) provide the full contact details (i.e., postal address(es),

telephone number(s), e-mail address(es)) available in the registrar’s WHOIS

database for the Registrant of the disputed domain names, the technical contact,

the administrative contact and the billing contact.

On March 13, 2001, a Formal

Requirements Compliance review was completed by the assigned WIPO Center Case

Administrator. The WIPO Center determined that the Complaint is in formal compliance

with the requirements of the Uniform Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by

ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental

Rules for Uniform Domain Dispute Resolution Policy, in effect as of December

1, 1999, (the "Supplemental Rules"). The required fees for a single

member Panel were paid by the Complainant on time and in the required amount.

A Notification of Complaint

and Commencement of Administrative Proceeding was sent by the WIPO Center to

the Complainant (email) and Respondent (FedEx, fax email), dated March 14, 2001.

The Notification set a deadline of April 2, 2001, by which the Respondent could

make a Response to the Complaint. Respondent submitted a Response on March 31,

2001.

On April 27, 2001, the

WIPO Center sent to the parties a Notification of Appointment of Administrative

Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement

of Acceptance and Declaration of Impartiality and Independence to the WIPO Center.

The Projected Decision Date, as determined by the WIPO Center and transmitted

to the parties on April 27, 2001, was May 11, 2001.

4. Factual Background

Complainant, International

Business Publishers, Inc. ("IBPI"), provided evidence that it has

a U.S. Trademark registration for the mark WORLD ENERGY for a "printed

magazine for industries that produce, provide, use or otherwise depend upon

fossil fuels or generated power" and for "computer services, namely,

providing on-line magazines for industries that produce, use or otherwise depend

upon fossil fuels or generated power."

Complainant publishes printed

and on-line magazines under the WORLD ENERGY marks. The on-line version of WORLD

ENERGY magazine, located at <worldenergysource.com>, contains articles

written by industry and political leaders and includes a search engine for searching

the articles of the magazine. The web site posts the latest news from around

the world, the means to get stock quotes, and a calendar of major events in

the energy industry.

Respondent, the Center

for Business Intelligence, LLC ("CBI") is the current Registrant of

the domain names <worldenergyonline.com> and <worldenergyonline.net>

which were registered on March 17, 2000. Respondent is a subsidiary of World

Conference Holdings, Inc. ("World Conference") which first organized

the World Economic Development Congress in September of 1992. Every year the

World Economic Development Congress has had a major session on energy. CBI produced

over 30 energy related conferences in 2000.

The web site maintained

by Respondent at <worldenergyonline.com> provides stock quotes, a listing

of future events in the energy industry, links to other web sites in the energy

industry, the latest news from the energy industry, and press releases pertinent

to the energy industry. Respondent’s web site includes articles on the coverage

of technical developments, case studies, industry news, company news, product

announcements, and opinion pieces. Respondent does not currently host a website

at <worldenergyonline.net>.

5. Parties’ Contentions

A. Complainant

Complainant contends that

Respondent has registered a domain name that is confusingly similar to a trademark

in which Complainant has rights. Complainant asserts that the domain name is

confusingly similar to Complainant’s mark because it incorporates the trademark

in its entirety and merely adds the generic term "online". Complainant

adds that the likelihood of confusion is significant because Respondent offers

substantially the same content at its Web Site as is offered by Complainant

and that Respondent’s web site competes directly with Complainant’s site.

Complainant contends that

Respondent’s web site is directed toward the same people as Complainant’s magazine.

Because the content of the two web sites are similar, Complainant contends that

Respondent is directly benefiting from the goodwill of Complainant’s WORLD ENERGY

marks.

Complainant asserts that

Respondent had constructive notice of Complainant’s rights in the mark before

Respondent registered the domain name. Additionally, Complainant asserts that

because of the confusion caused by the domain name chosen by Respondent and

the similarity of Respondent’s web content, Complainant is being deprived of

the opportunity to promote its WORLD ENERGY on-line magazine to interested parties.

B. Respondent

Respondent claims that

the words "world" and "energy" are common and generic terms

and that Complainant is therefore not entitled to exclusive use of those two

words in combination with a third generic term "online." Additionally,

Respondent indicates that Complainant commenced its online magazine in 1997,

and at that time chose to register <worldenergysource.com>. Complainant

therefore had three years in which to register <worldenergyonline.com>

before Respondent registered the name.

Respondent claims that

its web site has 10 times more traffic than Complainant’s web site and thus

Respondent is not trying to trade off of the good will of Complainant, but instead

hosts its own viable site. Additionally, Respondent states that its web site

is a portal site that aggregates energy information and is not a magazine like

Complainant’s site.

Respondent claims that

it was unaware of IBPI’s WORLD ENERGY trademark when it registered <worldenergyonline.com>

and <worldenergyonline.net>. Additionally, Respondent asserts that it

offered to help garner traffic for Complainant’s site by offering a distinct

link from the <worldenergyonline.com> site to World Energy magazine.

6. Discussion and Findings

A. Applicable Rules

and Principles of Law

Paragraph 15(a) of the

Rules instructs this Panel as to the principles the Panel is to use in rendering

its decision: "A Panel shall decide a Complaint on the basis of the statements

and documents submitted in accordance with the Policy, these Rules and any rules

and principles of law that it deems applicable." Paragraph 4(a) of the

Policy directs that the Complainant must prove each of the following:

(i) that the domain

name registered by the Respondent is identical or confusingly similar to a trademark

in which the Complainant has rights; and,

(ii) that the Respondent

has no rights or legitimate interests in respect of the domain name; and,

(iii) that the domain

name has been registered and used in bad faith.

B. Application of Paragraph

4(a) to the Facts

Identical or Confusingly

Similar to Trademark

Complainant is required

under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical

or confusingly similar to a trademark in which Complainant has rights. Complainant

has demonstrated that it has U.S. trademark rights to the name WORLD ENERGY

for printed and online magazines for industries that depend on fossil fuels

or generated power. The domain names <worldenergyonline.com> and <worldenergyonline.net>

incorporate Complainant’s mark in its entirety, but add a generic term "online"

to the mark.

The addition of the generic

term "online" does not eliminate confusion with Complainant’s mark

because it describes one of the services for which Complainant has a mark –

an online magazine. The fact that Respondent offers significantly similar and

potentially competing content at its web site increases the likelihood of confusion.

Because the disputed domain

names incorporate the WORLD ENERGY mark in its entirety, the Respondent offers

substantially similar content, and the addition of the generic term does not

help differentiate or diminish any confusion, this Panel finds that the domain

names are confusingly similar to a mark in which Complainant has rights.

Respondent’s rights and

legitimate interests in the domain name

To succeed in its request

for transfer, Complainant is required to prove that Respondent does not have

any rights or legitimate interest in the contested domain names. Complainant

alleges that Respondent does not have any rights or legitimate interest in the

domain names, but does not offer any evidence to support this allegation.

In contrast, Respondent

offers evidence of its legitimate interest in the domain name. Respondent states

that every year the World Economic Development Congress has had a major session

on energy and that these sessions are often referred to as World Energy. Additionally,

it is apparent from the materials submitted by Respondent that Respondent has

run numerous conferences relating to the world energy industry for many years.

Respondent chose to broaden this business by providing an online site that serves

as a portal of information on the world energy industry. Respondent chose a

domain name, <worldenergyonline.com> that is descriptive of the subject

matter of its business and web site. Respondent also registered <worldenergyonline.net>,

but does not yet use this domain name to connect to a web site. Although Respondent

does not currently use this domain name, Respondent has shown that it has a

legitimate connection to the world energy industry.

Respondent has asserted

a plausible legitimate interest in the names and Complainant has offered no

evidence—as opposed to allegations--to establish that Respondent does not have

a legitimate interest. Thus the Panel finds that Complainant has not carried

its burden of showing that Respondent does not have any right or legitimate

interest in the domain names.

Registration and use in

bad faith

Paragraph 4(a)(iii) of

the Policy requires that the Complainant show that the domain names have been

registered and used in bad faith. According to Complainant, Respondent had constructive

notice of the mark because it is a registered trademark. Respondent, however,

specifically asserts that it did not know of Complainant’s WORLD ENERGY mark

when it registered the domain names in dispute. Even if Respondent had known

of Complainant’s mark when it registered the domain names, mere knowledge of

a trademark does not by itself constitute bad faith.

Complainant claims that

Respondent is directly benefiting from the goodwill of Complainant’s marks by

creating a competing web site. Paragraph 4(b) of the Policy outlines the circumstances

that may serve as evidence of bad faith. One such circumstance is use of the

domain name to intentionally attract Internet users to the site by creating

a likelihood of confusion as to source, sponsorship or affiliation. While it

is possible that Respondent has benefited from the goodwill of Complainant’s

marks, Complainant has not alleged or shown that Respondent intended

this result.

Complainant also asserts

that Respondent’s use of the domain name deprives Complainant of the opportunity

to promote its WORLD ENERGY on-line magazine to interested parties. Once again,

however, there is no evidence that Respondent registered the domain name for

the purpose of preventing Complainant from reflecting its mark in a domain name.

In fact, Complainant has reflected its mark in a domain name similar to the

domain names in dispute in this case. Complainant registered <worldenergysource.com>

in 1997. There is no evidence indicating that it did not have the opportunity

for three years to register <worldenergyonline.com> or <worldenergyonline.net>

before Respondent registered the names.

The circumstances listed

in paragraph 4(b) of the Policy are merely examples of bad faith. While Complainant

has not proven that any of these circumstances are present, it has also not

offered any other evidence of bad faith registration and use of the domain names.

Thus, this Panel finds that Complainant has not carried its burden of proving

that Respondent has registered and used the domain names in bad faith.

7. Decision

This Panel decides that

Complainant has not shown that the Respondent has no legitimate interest in

the domain names or that the domain names were registered and used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel orders that

the registration of the domain names <worldenergyonline.com> and <worldenergyonline.net>

remain with Respondent.

Roderick

M. Thompson

Sole Panelist

Dated: May

11, 2001