Council of Better Business Bureaus, Inc. v. The Better Business Bureau

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Council of Better Business Bureaus, Inc., v The Better Business

Bureau

Case No. D2001-0677

1. The Parties

Complainant is the Council of Better Business Bureaus, Inc., (the Council)

with its principal place of business at 4200 Wilson Blvd., Suite 800, Arlington,

VA 22203, USA. Complainant is represented in this administrative proceeding

by Victoria Jean Doran, Assistant General Counsel.

Respondent is The Better Business Bureau (BBB-Asia), of Lippo Centre Suite

2207-9 Tower Two or of Hi Tech Street, Hong Kong, SAR the Rep of China.

2. The Domain Name and Registrar

The Domain Name the subject of this Complaint is <bbb-asia.com>.

The Registrar of the Domain Name is Network Solutions, Inc. (NSI), 505 Huntmar

Park Drive, Herndon, Virginia, 20170, USA.

3. Procedural History

3.1. The Complaint in respect of the disputed Domain Name was received by the

World Intellectual Property Organization Arbitration and Mediation Center (WIPO

Center) in hard copy on May 22, 2001 and by email on May 25, 2001. Complainant

states that a copy of the Complaint was sent on May 17, 2001, to Respondent

by international express mail and (without annexes) by email. A copy was sent

by fax to the Registrar, NSI, on the same date.

3.2. On May 29, 2001, verification was received from the Registrar, NSI, that

the disputed Domain Name <bbb-asia.com> is registered in the name of The

Better Business Bureau, Hong Kong. The NSI Service Agreement Version 5 is in

effect.

3.3. On May 30, 2001, WIPO Center determined (and the Administrative Panel

has subsequently accepted) that the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for

Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as

approved by the Internet Corporation for Assigned Names and Numbers (ICANN).

3.4. On May 31, 2001, Formal Notification of Complaint and Commencement of

Administrative Proceeding (with enclosures) was sent by WIPO Center by courier

to the most recently registered address of Respondent and also to a different

address the Complainant had obtained from the Registrar on February 22, 2001.

Email copies without enclosures were sent to Respondent, copied to Complainant,

ICANN and NSI on May 30, 2001. On that date a printed record of the first page

of the disputed website was made.

3.5. The couriered copies of the Formal Notification of Complaint and Commencement

of Administrative Proceeding were not successfully delivered and were returned

to WIPO Center where they were received on June 12, 2001.

3.6. No Response was received from Respondent by the due date of June 19, 2001,

and a Notification of Respondent Default was sent to the Parties on June 21, 2001.

3.7. On July 3, 2001, Dr. Clive Trotman, having provided the WIPO Center with

a Statement of Acceptance and Declaration of Impartiality, was appointed as

a single member Administrative Panel and notification was sent by email to Complainant,

Respondent and the Administrative Panel. An electronic copy of the Complaint

and Response was sent by email to the Administrative Panel on July 3, 2001,

and the hardcopy of the Case File was sent by courier.

4. Factual Background

4.1. The Complainant is a non-profit member organization, incorporated in Delaware,

USA.

4.2. Complainant holds trademarks or service marks (hereafter trademarks) incorporating

"Better Business Bureau" or "BBB" for "investigative

and information services relative to business and trade practices for protecting

responsible business against abusive business practices and for establishing

and maintaining legitimate advertising and merchandising practices" in

several countries including USA, UK, Canada, Costa Rica, Mexico, Japan and the

European Community.

4.3. Complainant has used its trademarks continuously since 1916.

4.4. Respondent is the Registrant of the disputed Domain Name <bbb-asia.com>,

which has a record created date of February 8, 2001.

4.5. Respondent's website uses the headline "Better Business Bureau Asia"

and a "BBB Asia" logo. The website presents a service of providing

reports on companies.

5. Parties’ Contentions

A. Contentions of Complainant

5.1. The contentions of Complainant include (paragraphs 5.2-5.8 below) that:

5.2. The dispute is properly within the scope of the Policy. The registration

agreement, pursuant to which the Domain Name being the subject of this Complaint

was registered, incorporates the Policy.

5.3. The disputed Domain Name is confusingly similar to trademarks in which

Complainant has rights.

5.4. Respondent has no rights or legitimate interest in the disputed Domain

Name. There is no Council of Better Business Bureaus Asia in bona fide

existence and no such entity owns legitimately the trademark "BBB-Asia".

Respondent is attempting to indicate that the website is owned and operated

by Complainant to provide information on Asian companies.

5.5. Respondent’s registration and use of the disputed Domain Name is in bad

faith in terms of the Policy. Respondent is intentionally attempting to attract

Internet users to its website for commercial gain by creating a likelihood of

confusion in the terms of Paragraph 4(b)(iv) of the Policy. Respondent claims

to provide services effectively identical to those of Complainant. Respondent's

website imitates Complainant's website in having a similar look and feel, the

same font and color for "BBB" and contains information copied from

Complainant’s website including its Mission Statement, privacy policy, legal

information, and disclaimer of endorsement.

5.6. An investment company that advised an Australian resident to verify the

investment company’s reliability with BBB-Asia was itself apparently connected

with BBB-Asia as evidenced by the Registrants of both the investment company

and BBB-Asia having the same email address <concept-promotions@gmx.de>

in common.

5.7. Complainant has made unsuccessful attempts to contact Respondent by international

express mail at the different present and previous addresses of registration

on record and by electronic mail. Mail has been returned undelivered and no

approaches have been replied to.

5.8. The remedy requested by Complainant is that the disputed Domain Name be

cancelled.

B. Contentions of Respondent

5.9. No Response has been received from Respondent.

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Uniform Policy states:

"You are required to submit to a mandatory administrative proceeding in

the event that a third party (a "complainant") asserts to the applicable

Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name;

and

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

6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute

is properly within the scope of the Domain Name Dispute Policy and the Administrative

Panel has jurisdiction to decide the dispute.

Whether the Domain Name is Identical or Confusingly Similar to a Trademark

6.3. The Domain Name subject to this Complaint is <bbb-asia.com>. The

Domain Name not only includes the Complainant's trademark "BBB" but

is confusingly suggestive of an Asian branch or office or Asian-related site

of the Complainant. The Administrative Panel finds that the disputed Domain

Name is confusingly similar to the trademark "BBB" in which Complainant

has rights in terms of Paragraph 4(a)(i) of the Uniform Policy.

Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain

Name

6.4. Complainant certifies that the continuous use of its trademarks including

"BBB" dates back to 1916 and asserts that Respondent has no rights

or legitimate interests in the disputed Domain Name.

6.5. Respondent has not responded with any claim to use the Domain Name or

a name corresponding to the Domain Name in connection with a bona fide

offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.

6.6. There is no evidence that Respondent as an individual, business, or other

organization has been commonly known by the Domain Name in terms of Paragraph

4(c)(ii) of the Policy.

6.7. Respondent does not claim to be making a legitimate noncommercial or fair

use of the Domain Name in terms of Paragraph 4(c)(iii) of the Policy.

6.8. The Administrative Panel finds that Respondent has no rights or legitimate

interests in the disputed Domain Name in terms of Paragraph 4(a)(ii) of the

Policy.

Whether Domain Name Has Been Registered and Is Being Used in Bad Faith

6.9. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that

the Domain Name has been registered and is being used in bad faith. Paragraph

4(b), whilst without limitation, provides in clause (iii) for a finding of bad

faith where "you have registered the domain name primarily for the purpose

of disrupting the business of a competitor", or in clause (iv) where "by

using the domain name, you have intentionally attempted to attract, for commercial

gain, Internet users to your website or other on-line location, by creating

a likelihood of confusion with the complainant's mark as to the source, sponsorship,

affiliation, or endorsement of your website or location or of a product or service

on your website or location".

6.10. Uncontested evidence as to the misleading style and content of Respondent's

website is presented by Complainant and supported by screen prints. Respondent,

on its website, claims to provide a range of services identical to those provided

by the North American Better Business Bureaus; claims that BBB-Asia is part

of a Council of Better Business Bureaus Asia that Complainant says does not

genuinely exist; implies that BBB-Asia is well established; implies that BBB-Asia

is an acronym for Better Business Bureau Asia; and claims that Complainant owns

the Asia-related trademarks and "BBB" logo. Further evidence of passing-off

includes the site having a similar look and feel to Complainant's, and the same

font and color for "BBB". Text copied from Complainant's to Respondent's

site includes the Complainant Council's Mission Statement, privacy policy, legal

information and disclaimer of endorsement. One page deviously states: "As

to date their (sic) are no companies in the Asian region misusing our

logo or name." The Administrative Panel finds on the evidence that Respondent

has for commercial gain attempted to attract users by misleading them into thinking

it is affiliated with Complainant.

6.11. Complainant certifies that a person who had been offered an investment

by International Asset Management, Thailand (IAM) was advised by IAM to verify

its reliability with BBB-Asia, in consequence of which the person ultimately

reported the facts to the Complainant. Enquiries by Complainant revealed evidence

that the same email address <concept-promotions@gmx.de> is common to the

Registrants of both (a) the disputed Domain Name and (b) IAM. The Administrative

Panel finds this to be further evidence of attempted commercial gain and of

activity disruptive of Complainant's legitimate business and good name.

6.12. The Administrative Panel finds on the facts that the registration and

use of the disputed Domain Name are in bad faith in general terms in addition

to fulfilling all ingredients of Paragraph 4(b)(iv) of the Policy. Bad faith

is also found in terms of Paragraph 4(b)(iii) of the Policy since the activities

complained of are competitive with and disruptive of the business of the Complainant.

6.13. In summary, as concluded in 6.3 above the disputed Domain Name is confusingly

similar to Complainant's trademarks and Complainant succeeds under Paragraph 4(a)(i)

of the Policy. As concluded in 6.8 above, Respondent has no rights or legitimate

interests in the Domain Name and Complainant succeeds under Paragraph 4(a)(ii)

of the Policy. As concluded in 6.12 above, Respondent has registered and used

the Domain Name in bad faith and Complainant succeeds under Paragraph 4(a)(iii)

of the Policy. The Complainant has proven all three points required by Paragraph

4(a) of the Uniform Policy and the Administrative Panel gives its Decision for

the Complainant and against the Respondent.

7. Decision

The Decision of the Administrative Panel is that the disputed Domain Name <bbb-asia.com>

is confusingly similar to the trademark "BBB" in which Complainant

has rights; that Respondent has no rights or legitimate interests in the disputed

Domain Name; and that Respondent has registered and is using the disputed Domain

Name in bad faith. The Domain Name <bbb-asia.com> shall be cancelled.

Dr. Clive N. A. Trotman

Sole Panelist

Dated: July 13, 2001

More cases by this complainant

• Council of Better Business Bureaus, Inc. v. Server 100 — D2006-0443 · betterbusinessonline.com · Complaint denied · 22 Jun 2006