CyberTrader, Inc. v. Gregory Bushell

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CyberTrader, Inc. v. Gregory Bushell

Case No. D2001-1019

1. The Parties

Complainant is CyberTrader, Inc., a corporation located in Austin, Texas, USA.

Respondent is Gregory Bushell, an individual located in Richardson, Texas,

USA.

2. The Domain Names and Registrar

The domain names at issue are:

<thecyberbroker.com>

<thecybertrader.com>

<thecybertraders.com>

(collectively, the "Domain Names")

The registrar is Register.com

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute

Resolution Policy, approved October 24, 1999, ("the Policy") and the ICANN Rules

of Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999

("the Rules").

The Complaint was submitted on August 7, 2001. On August 16, 2001, Register.com

confirmed registration of the Domain Names at issue to the Respondent. The Response

was submitted on September 6, 2001. The Complainant filed a supplemental filing

on September 17, 2001.

On October 1, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge

as Single Panelist.

4. Factual Background

Complainant is a securities broker specializing in electronic trading and brokerage

services. Complainant is a wholly owned subsidiary of CyBerCorp Holdings, Inc.,

which was formed on September 12, 2000, when "CyBerCorp, Inc." changed

its name to "CyBerCorp Holdings, Inc."

On October 19, 1998, CyBerCorp, Inc., applied for registration of the marks

CYBERTRADER and CYBERBROKER with the United States Patent and Trademark Office

(USPTO).

On February 7, 2000, the USPTO issued final refusals to place CYBERTRADER or

CYBERBROKER on the Principal Register. The marks were subsequently placed on

the Supplemental Register on September 26, 2000, and November 7, 2000.

On March 29, 2001, Complainant’s parent company filed a new application to

have CYBERTRADER placed on the Principal Register. The mark has not yet been

registered.

Complainant claims that has rights in the CYBERTRADER AND CYBERBROKER marks,

but has submitted no evidence to show the nature and extent of its use. Complainant

alleges that it has rights in CYBERTRADER PRO, CYBERTRADER U and CYBERTRADER

UNIVERSITY, but has submitted no evidence of use or registration.

The Respondent is a "venture capitalist," who also owns and operates

several web sites, including <stockpilot.com> and <tradealink.com>,

the latter of which offers domain names for sale. On September 24, 1999, the

Respondent registered <thecybertrader.com> and <thecybertraders.com>

as domain names with Register.com. Respondent registered the domain name <thecyberbroker.com>

with Register.com on May 9, 2000.

On August 1, 2001, Respondent sent Complainant an email message claiming that

it had registered the Domain Names prior to Complainant's acquisition and use

of CYBERTRADER. Respondent asked Complainant to cease use.

5. Parties' Contentions

Complainant contends that the Domain Names are indistinguishable from the Complainant’s

marks and are, therefore, likely to cause confusion among users "as to

the source, sponsorship, affiliation, or endorsement of Respondent’s Web sites."

Complainant also contends that Respondent has no legitimate interest in the

Domain Names because he has failed to use the Names in a bona fide offering

of goods and services, is not "known by or connected with" the Names,

adopted the Names with "prior awareness of Complainant’s trademarks and

service marks," and "has engaged in a pattern of conduct that prevents

Complainant from reflecting its mark in corresponding domain names."

Complainant contends that Respondent registered the Domain Names in bad faith

because he "knew or should have known of Complainant’s marks prior to registering

the Domain Names," he seeks to "interfere with and disrupt Complainant’s

business by preventing Complainant from using the most obvious and logical names

for Complainant’s business," and "the Domain Names do not resolve

to a substantive online presence." Finally, Complainant contends that Respondent’s

"bad faith registration alone" constitutes bad faith use of the Domain

Names.

Respondent contends Complainant has no rights in the CYBERTRADER and CYBERBROKER

marks, arguing that these terms are merely descriptive and Complainant has failed

to submit evidence "to establish either fame or strong secondary meaning."

Respondent further contends that Complainant’s marks are "common words

and descriptive terms" and may be registered "as domain names on a

first come first served basis."

Respondent argues that at the time he registered the Domain Names, the USPTO

had not registered a trademark for CYBERTRADER, CYBERTRADERS or CYBERBROKER

to Complainant or anyone else. Respondent contends that he has never operated

a web site using the Domain Names that diverted Internet traffic away from the

Complainant’s web site, but that he has used the name <thecyberbroker.com>

in a bona fide offering of goods and services that are different from

the services Complainant offers. Finally, Respondent contends that he registered

the Domain Names before Complainant registered its domain name <cybertrader.com>

and requests that <cybertrader.com> be transferred from Complainant to

Respondent. This later request is not properly before the Panel and will not

be considered.

6. Discussion and Findings

Our inquiry focuses on three issues: (1) are the Domain Names confusingly similar

to a trademark or service mark in which Complainant has rights; (2) does Respondent

have a legitimate interest in the Domain Names; and (3) have the Domain Names

been registered and used in bad faith? The Complainant has the burden of proof

on each of these issues.

A. Confusing Similarity

A threshold question here is whether Complainant has established a protectable

right in either CYBERTRADER or CYBERBROKER. In order to have a protectable right,

Complainant’s marks must be distinctive and used in commerce. Federal registration

of a mark is prima facie evidence of its distinctiveness. Complainant makes

reference to the "registration" of the CYBERTRADER and CYBERBERBROKER marks

with the USPTO. Complainant fails to mention, however, that the USPTO refused

to place either of these marks on the Principal Register, and the registration

numbers Complainant cites refer to the Supplemental Register, which provides

the Complainant with no protectable rights in the marks.

In my opinion both CYBERTRADER and CYBERBROKER are merely descriptive of a

business that provides some type of trading or brokering transactions over the

Internet and are, therefore, not eligible for federal trademark protection absent

a showing of secondary meaning. The USPTO’s refusal to place these marks on

the Principal Register supports my opinion. Complainant may very well have evidence

establishing secondary meaning in the marks CYBERTRADER and CYBERBROKER, but

none is presented in the record here.

Complainant also claims to have "acquired common law trademark rights"

in several marks containing the word "CYBERTRADER." However, Complainant

provides no other information or evidence to establish protectable common law

rights in these marks. Absent any proof of secondary meaning, I cannot conclude

that Complainant has a protectable right in either CYBERTRADER or CYBERBROKER.

Because Complainant failed to prove it has protectable rights in CYBERTRADER

or CYBERBROKER, it, therefore, failed to prove it has a bona fide basis

for filing a complaint in this matter. The Domain Names at issue may very well

be confusingly similar to Complainant’s trademarks, but absent proof of Complainant’s

protectable rights in the marks, such similarity is irrelevant.

B. Legitimate Interest

Complainant contends that Respondent has no legitimate interest in the Domain

Names because, inter alia, Respondent failed to use the Names in a bona

fide offering of goods and services, and Respondent is not "known by

or connected with" the Domain Names.

Complainant’s "Exhibit D" demonstrates that the domain name <thecyberbroker.com>

is being used by Respondent in a bona fide offering of goods and services.

The same is not true for the cybertrader domain names. Although Respondent

also claims to be involved in some type of business venture named "The

Cyber Trader," it is not clear from the record what this business venture

entails and what steps Respondent has taken to bring this venture to fruition.

The record does not show that Respondent is using the Domain Names <thecybertrader.com>

or <thecybertraders.com> in a bona fide offering of goods and services,

and there is no evidence, save Respondent’s claims, that Respondent is known

by or connected with either of these two Names.

Complainant may have met its burden of proof with respect to showing Respondent’s

lack of a legitimate interest in <thecybertrader.com> and <thecybertraders.com>,

but, absent proof of Complainant’s protectable rights in the marks, competing

proprietary interests in domain names must be resolved on a first come first

served basis. See Zero International Holding GmbH & Co.Kommanditgesellschaf

v. Beyonet Services and Stephen Ulrich, WIPO

Case No. D2000-0161.

C. Bad Faith

Complainant contends that Respondent registered the Domain Names in bad faith

because he "knew or should have known of Complainant’s marks prior to registering"

them. That may be the case, but, other than the bald claim that its marks "have

become associated worldwide with Complainant’s goods and services, " Complainant

failed to provide any evidence to support this contention.

As to the domain name <thecyberbroker.com>, Respondent registered this

name five months after Complainant was denied its application to have CYBERBROKER

placed on the Principal Register. It is difficult to find bad faith where Respondent

could have relied, in good faith, on the USPTO’s refusal to register CYBERBROKER.

As to the other domain names, Respondent registered these at a time when Complainant

had pending applications to register CYBERTRADER. Mere applications for registration

do not prove any protectable rights. In fact, the applications were ultimately

refused. Under these circumstances, without evidence of prior use to support

a claim for common law rights, it is again difficult to find bad faith. Obviously,

Respondent is at risk if Complainant does in fact have prior use to establish

prior common law rights.

Complainant provided no evidence that Respondent used the Domain Names to divert

Internet traffic from Complainant for commercial gain. The mere existence of

Respondent’s web site <thecyberbroker.com>, which appears to be a "how

to get rich quick using the Internet" site (including selling domain names)

and does not venture into electronic trading and brokerage services for securities,

is not, by itself, proof that Respondent has diverted traffic from the Complainant.

I do, however, find the Respondent’s electronic mail message to Complainant

troubling. This letter may be evidence of Respondent’s intent to "prevent

the Complainant from reflecting its mark in the corresponding domain name,"

and creates an inference that the Respondent also intended to disrupt Complainant’s

business. Taken in conjunction with Respondent’s web site <TradeALink.com>,

which is clearly designed to market domain names, one might also infer that

Respondent intended to "sell, rent, or otherwise transfer the domain name

registrations to the Complainant or to a competitor of the Complainant."

If Complainant had provided evidence of prior common law rights, these facts

may have been sufficient for a finding in its favor. However, absent a showing

of protectable rights of the Complainant in the Domain Names at issue, I conclude

that Complainant has also failed to establish bad faith registration and use.

7. Decision

Complainant has failed to present sufficient evidence of protectable rights

in the marks CYBERTRADER or CYBERBROKER. Accordingly, Complainant's request

for relief is denied as to <thecybertrader.com>, <thecybertraders.com>,

and <thecyberbroker.com>.

Mark V. B. Partridge

Sole Panelist

Dated: October 15, 2001

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

CyberTrader, Inc. v. Gregory Bushell

Case No. D2001-1019

This is an Addendum to the Administrative Panel Decision ("Decision") dated October 15, 2001 with regard to the domain name dispute between the parties involving the domain names <thecyberbroker.com>, <thecybertrader.com>, <thecybertraders.com>.

Further Procedural History

On October 25, 2001, the Respondent, Mr. Gregory Bushell ("Respondent"), contacted the WIPO Arbitration and Mediation Center ("Center") by e-mail indicating that the Administrative Panel Decision did not address the Respondents request for a finding of reverse domain name hijacking.

This addendum addresses the Respondents request.

Reverse Domain Name Hijacking

In its Response, Respondent alleged that Complainant is guilt of "attempting

to reverse hijack respondents [sic] property." The Response states:

"The Complainant produced no evidence that it had attempted to contact the

respondent and negotiate a resolution of the matter prior to initiating the

panel proceeding, and where the domain names at issue consists [sic] of a well-known

common, descriptive English phrase(s), and where the complainant knew that the

respondent had registered for sale other domains names all which consist of

common and / or descriptive words and phrases together with the generic top

level domain names.

"Therefore, the Complainant should be found to be operating in "Bad Faith"

and required to surrender the domain name CyberTrader.com to Respondent. This

action is within the scope of the Uniform Domain Name Dispute Resolution Policy.

The panelist is duty bound to set precedence [sic] if necessary in order to

protect the integrity of the ICANN system from such behavior as exhibited by

the Complainant."

In support of its request, Respondent cites K2r Produkte AG v. Jeremie Trigano,

WIPO Case No. D2000-0622 (WIPO August

23, 2000), Cf. Goldline International, Inc. v. Gold Line, WIPO

Case No. D2000-1151 (WIPO January 4, 2001).

Paragraph 15(c) of the Rules provides the Panel with the authority to make

a finding of reverse domain name hijacking, stating:

"If after considering the submissions the Panel finds that the complaint was

brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking

or was brought primarily to harass the domain-name holder, the Panel shall declare

in its decision that the complaint was brought in bad faith and constitutes

an abuse of the administrative proceeding."

Panels have made a finding of reverse domain name hijacking in a small number

of cases. See e.g., Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand

AG, WIPO Case No. D2001-0916 (WIPO October

12, 2001).

Reverse domain name hijacking involves an attempt by a trademark owner to take

a domain name for another party without having a colorable legal right to do

so. Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO

Case No. D2001-0823 (WIPO August 28, 2001). The finding is not appropriate

where there is a legitimate dispute over the right to hold the domain name and

the Complainant pursues the matter in an appropriate forum. Id.

In K2r Produkte AG v. Jeremie Trigano, WIPO

Case No. D2000-0622 (WIPO August 23, 2000), the Complainant owned rights

in the famous mark K2r for spot remover. The Respondent, a retailer name Kirk

& Rosie Rich, registered the domain name <k2r.com> as a derivative

of its store name. The Panel agreed that the Respondent had a legitimate interest

in the domain name and had not registered it in bad faith. Two of the panelist

further found that the case had been brought in bad faith because the Complainant

had ascertained all facts necessary to conclude the Respondent had not violated

the Policy at the time the Complainant was filed. The remaining panelist disagreed

on that issue, finding that the Complainant had a reasonable, although ultimately

erroneous, basis for filing the action.

In Goldline International, Inc. v. Gold Line, WIPO

Case No. D2000-1151 (WIPO January 4, 2000), a unanimous panel found that

the complainant had been filed in bad faith. The Complainant owned rights in

the mark GOLDLINE for gold and precious metals. The Respondent, operated a consulting

business specializing in vanity toll-free numbers, registered the domain name

<goldline.com>. The panel found that the respondent had a legitimate interest

in using the domain name for an unrelated business and had not registered or

used the name in bad faith. The panel also concluded that the complaint had

been filed in bad faith. In explaining its decision, the panel stated the following

standard for finding bad faith under Paragraph 15(c) of the Rules.

"To prevail on such a claim, Respondent must show that Complainant knew of

Respondent's unassailable right or legitimate interest in the disputed domain

name or the clear lack of bad faith registration and use, and nevertheless brought

the Complaint in bad faith."

As a starting point in this case, I note that neither the Policy, Rules or

prior decisions provide the panel with authority to grant Respondent's request

that Complainant's domain name be transferred to Respondent. To obtain that

relief, Respondent would need to file a separate action in Court or under the

Policy. As for a finding of bad faith under Paragraph 15(c) of the Rules, I

do not believe it is warranted in this case. Complainant owns Supplemental Registrations

for CYBERTRADER and CYBERBROKER, and therefore has made actual use of the alleged

marks, although it failed to present evidence of the nature and extent of that

use. Therefore, it appears that Complainant held a sincere belief that it had

rights in the marks. In addition, as noted above, the circumstances relating

to Respondent's registration and use seem suspicious. Although I have found

a failure of proof of the claims, I do not find that Complainant either knew

of "Respondent's unassailable right or legitimate interest" or that Respondent

knew there was a "clear lack of bad faith registration and use." It appears

to me that Complainant had a reasonable, although ultimately unproved or erroneous,

basis for filing the action. I do not find that Complainant brought the claim

with knowledge that the claim lacked merit. Therefore, Respondent's request

for a finding of reverse domain name hijacking is denied.

7. Decision

The Panelist accordingly reaffirms the Decision; the Complainant has failed

to present sufficient evidence of protectable rights in the marks CYBERTRADER

or CYBERBROKER. Accordingly, Complainant's request for relief is denied as to

<thecybertrader.com>, <thecybertraders.com>, and <thecyberbroker.com>.

Mark V. B. Partridge

Sole Panelist

Dated: October 30, 2001