Buy Owner International, Inc. v. Tri-Star Realty

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Buy Owner International, Inc. v. John Frank

Case No. D2002-0407

1. The Parties

Complainant is Buy Owner International, Inc., 5757 N. Andrews Way, Fort Lauderdale,

Florida 33309, United States of America ("Complainant").

Respondent is John Frank ("Respondent" or "Frank"), Buy

Owner Services, 10010 US 19, Port Richey, Florida 34668, United States of America.

2. Domain Name and Registrar

The domain name at issue is: <buyownerservices.com> (the "Domain

Name").

The registrar is Network Solutions, Inc., now owned by VeriSign, Inc., 487

E. Middlefield Road, Mountain View, California 94043, United States of America.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the Complaint in hard copy on April 30, 2002, and by e-mail on May 29, 2002.

The required statement regarding mutual jurisdiction was received by e-mail

on June 7, 2002, and in hard copy on June 12, 2002. The

Center verified that the Complaint satisfies the formal requirements of the

ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

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

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"). Complainant made the required payment

to the Center.

On May 3, 2002, the Center transmitted via e-mail to the Registrar a request

for registrar verification in connection with this case. On May 6, 2002,

the Registrar transmitted via e-mail to the Center its response, confirming

that the Domain Name was registered through it; that Respondent is the current

registrant of the Domain Name; that the Administrative, Technical and Billing

Contacts for the Domain Name are the Respondent; that the language of the service

agreement is English; that the Respondent has submitted to jurisdiction at the

location of the Registrar; and that the Registrar will not cancel, transfer,

or otherwise alter the status of the Domain Name except as provided in paragraph

3 of the Policy.

On June 12, 2002, the Center transmitted the Notification of Complaint and

Commencement of Administrative Proceeding, together with a copy of the Complaint,

via e-mail, mail, and facsimile to Respondent, and a copy (without enclosures)

to the Registrar. The Center notified Respondent that his Response was to be

sent to the Center by e-mail and in hard copy by July 2, 2002, pointed

out that the Response should be in accordance with the Rules and the Supplemental

Rules, and described the consequences of a default if the Response was not sent

by the due date. The Center also noted that Complainant had elected for a single

panelist to decide this matter, and informed Respondent of his option to request

a three-member panel.

The requirements of Rule 2(a) having been satisfied, the formal date of the

commencement of this administrative proceeding, pursuant to Rule 4(c), was June 12, 2002.

On July 3, 2002, the Center received the Response from Respondent. The Center

acknowledged the Response on July 4, 2002. The Response, therefore,

was received one day late. It is, nevertheless, within the Panel's discretion

to consider the Response, and this Panel chooses to consider it.

On July 19, 2002, the Center advised the parties, in accordance with Rule 6(f),

of the appointment of Michael Albert, the undersigned, as the Panelist in this

case. Pursuant to Rule 15(b), the Center further informed the parties that,

absent exceptional circumstances, the Panel would forward a decision to the

Center by August 3, 2002.

On July 19, 2002, the Center transmitted the case file to the Panel.

4. Factual Background; Parties’ Contentions

a. The Trademark

The Complaint is based on Complainant’s alleged ownership of rights in trademarks

"containing BUY OWNER as the salient portion." Complainant alleges

ownership of U.S. Registration No. 1,655,029 (registered in 1991), and U.S.

Reg. Nos. 2,071,688 and 2,071,689, for real estate listing, advertising, and

brokerage services in International Classes 35 and 36 (respectively), registered

in 1997.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction

to decide the dispute. In Paragraph 11 of its Complaint, Complainant avers that

each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complaint

Complainant asserts as follows:

- That the Domain Name is confusingly similar to its trademarks because, according

to Complainant, the domain name "contains all of the word portion of Complainant’s

registered marks, and merely makes it into a plural of Complainant’s registered

mark by adding an ‘s’ to the end."

- That Respondent has no rights or legitimate interest in the Domain Name because

he did not register it until years after Complainant’s federal trademark registrations.

- That Respondent registered and used the Domain Name in bad faith in three

ways: (1) by registering it "for the purpose of disrupting the business

of Complainant"; (2) by using it in an intentional attempt to attract business

to Respondent’s web site by creating a likelihood of confusion with Complainant’s

mark; and (3) because Respondent "is not making a legitimate non-commercial

or fair use" of the Domain Name, but rather is using it "for commercial

purposes in the same field in which Complainant is using its registered marks."

d. The Response

The Response does not comport with the requirements of the Rules, Paragraph

5(b). Rather, it consists, in its entirety, of a one-page e-mail from Respondent.

In it, Respondent makes three points:

(1) That Complainant’s alleged BUY OWNER trademarks "are not able to be

trademarked by themselves and if the case was trademark infringement then this

is not the place to make that decision."

(2) That there is more than a single letter "s" differentiating the

two companies’ web addresses, Complainant’s web address being <buyowner.com>

and Respondent’s being <buyownerservices.com>. Respondent adds, albeit

without proof, that there are "hundreds of similar companies with similar

web address" offering similar products or services, including <byowner.com>,

<byowneronline.com>, and <owners.com>.

(3) That there was no bad faith or intent to confuse in the adoption or use

of the Domain Name; that the corporate logo and colors used by the two companies

are different; and that there is no likelihood of confusion.

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the

Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and

other applicable legal authority, pursuant to Rule 15(a). In the Panel’s view,

given that both parties to this dispute are based in the United States, applicable

authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to the Domain Name, each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark 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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by Respondent, would demonstrate Respondent’s rights

or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).

b. Complainant’s Proof

Complainant has set forth what would, in a United States court, constitute

adequate "notice pleading" of a claim of trademark infringement. It

has alleged ownership of a trademark, it has alleged priority of use of that

mark as compared to Respondent, and it has alleged that the Respondent uses

a confusingly similar mark in the same or a related field. Complaints filed

under the Policy, however, are not analogous to complaints filed in federal

court. Instead of merely alleging the elements of a cause of action, a complainant

is required to present all of the proof that it believes suffices to establish

its entitlement to prevail. Complainant has presented sufficient proof on some,

but not all, of the elements that it needs to prove.

(i) Whether Domain Name Is Confusingly Similar to Trademark

Complainant has proven that it is the owner of three federal trademark registrations

for some variant of the mark BUY OWNER. The two registrations it obtained in

1997 are for that mark together with a design of a house. Those registrations

are thus limited to that stylized form. It also has a 1991 registration, for

BUY OWNER in block letters, in International Class 36 for "real estate

listing services." That registration is in full force and effect. Complainant’s

registrations of its marks on the Principal Register of the United States Patent

and Trademark Office ("PTO") establish a presumption of validity of

the marks under United States law. See 15 U.S.C. § 1057(b); Avery

Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations

constitute constructive notice to all other parties of Complainant’s ownership

of the marks. See 15 U.S.C. § 1072.

Moreover, after the 1991 registration had been in effect for over five years,

the PTO received and acknowledged Complainant’s affidavit of incontestability,

and the registration duly became "incontestable" (except on certain

limited grounds specified by statute) pursuant to 15 U.S.C. § 1065.

Accordingly, Respondent’s contention that the mark in question "cannot

be trademarked" flies in the face of the fact that the PTO has duly determined

that the mark was entitled to federal registration, which registration has since

become incontestable. While the federal courts, and not the PTO, are the final

arbiters of the validity, registrability, strength, and other legal status of

a U.S. trademark, the PTO’s decision that a mark is registrable, and the fact

that the mark has since become incontestable, make Complainant’s trademark ownership

presumptively valid absent contrary proof by Respondent. The Response offers

little if anything in the way of proof.

The Panel concludes that Complainant owns a valid trademark, and trademark

registration, for the mark BUY OWNER, in the field of real estate listing services.

Accordingly, the Panel turns to the question whether the mark is confusingly

similar to the Domain Name.

As Respondent correctly points out, the difference between the mark BUY OWNER

and the Domain Name <buyownerservices.com> is considerably more than merely

the addition of the letter "s," as the Complaint incorrectly asserts.

Rather, it is the addition of the word "services."[1]

It is well established that the addition of a single, generic term to an otherwise

strong trademark does not necessarily eliminate or even reduce the risk of confusion

between a trademark and a domain name. See MasterCard International

Incorporated v. John Henry Enterprises, WIPO

Case No. D2001-0632 (June 28, 2001) (adding word "international"

to the trademark "MasterCard" does not eliminate confusion");

AT&T Corp. v. Fred Rice, WIPO Case

No. D2000-1276 (November 25, 2000) (adding word "global"

to an AT&T trademark was insufficient to distinguish the domain name from

the trademark).

Accordingly, had Respondent added the word "services" to a strong,

distinctive trademark, Complainant would have a good case for showing a likelihood

of confusion. Here, however – despite its federal registration – the mark BUY

OWNER appears to be relatively weak. Under U.S. trademark law, marks are typically

classified into one of five categories, which are (in order from weakest to

strongest): generic, descriptive, suggestive, arbitrary, or fanciful. See,

e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d

4 (2d Cir. 1976). A reasonable argument could be made that Complainant’s mark

is merely descriptive of the services (buying from owners) with which it is

used. Even if it could be found to bypass the "descriptive" stop on

the strength spectrum and reach the "suggestive" category, it is at

best a weak suggestive mark, and plainly does not come close to the "arbitrary"

or "fanciful" classifications that cover the strongest trademarks.

Nor has Complainant offered any proof of the mark’s distinctiveness in the form

of evidence of secondary meaning – such as substantial sales volume, advertising

expenditures, consumer recognition surveys, or the like.

Additionally, Respondent suggests that there are numerous third-party uses

of similar marks that undermine the Complainant’s claim of trademark distinctiveness

and thus strength. Respondent, however, offers no proof to support his assertions,

and it is not the role of the Panel to conduct research, either on the Internet

or elsewhere, to determine whether such uses exist (or whether they are genuinely

third-party uses rather than uses affiliated with one of the parties). Accordingly,

Respondent has failed to prove third-party usage undermining the claim of trademark

strength.

Nevertheless, Complainant has the burden of proof on the likelihood of confusion

factor, and it has not offered proof of the strength of its mark sufficient

to persuade the Panel that there is a substantial likelihood of confusion between

the mark and the Domain Name. The Panel does not find that such confusion is

impossible, or even unlikely, but merely finds it questionable whether Complainant

has shown a substantial risk of such confusion. Because this issue is a close

one, however, the Panel will proceed to analyze the remaining factors.

(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name

There is limited evidence in the record, from either side, as to whether Respondent

has any legitimate interest in the Domain Name under the criteria set forth

in Paragraph 4(c) of the Policy. Respondent may have been using the Domain Name

in connection with a bona-fide offering of his services since prior to any actual

notice from Complainant of the dispute; but he offers no evidence to prove such

a defense. Moreover, registration of the marks constituted constructive notice

of the Complainant’s claim of right, and Respondent’s usage post-dates that

registration. Respondent has offered no proof that he is commonly known by the

Domain Name, although it appears that he has been using it in commerce for several

years. Finally, Respondent’s use is not "noncommercial," so the exception

in paragraph 4(c)(iii) does not apply[2].

The Panel concludes that there has been no showing that Respondent meets one

or more of the criteria set forth in paragraph 4(c) for establishing rights

or legitimate interest in the Domain Name. Again, the Panel does not conclude

that no such rights exist, but merely that Respondent’s proof, as set forth

in his one-page Response (with no attached materials), is inadequate to establish

such a defense[3].

(iii) Registration and Use in Bad Faith

Complainant’s third hurdle is to establish that Respondent has registered and

used the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the

registration and use of a domain name in bad faith. The first is acquisition

or registration of the domain name "primarily for the purpose of selling,

renting, or otherwise transferring the domain name registration to the complainant

who is the owner of the trademark or service mark … or to a competitor of that

complainant, for valuable consideration in excess of [registrant’s] documented

out-of-pocket costs directly related to the domain name."

In this case, the Panel finds no evidence of this type of bad faith. Complainant

does not allege that Respondent offered to sell the Domain Name, or had any

intent to do so. Rather, Respondent is using the Domain Name for his own commercial

enterprise.

The second illustration of bad faith in the Policy occurs when the registrant

registers the domain name to prevent the trademark owner from reflecting the

mark in a corresponding domain name, particularly when Respondent has engaged

in a pattern of such conduct. Complainant alleges no such intent or pattern,

and there is no evidence of any. Complainant has not been prevented from registering

a domain name containing Complainant’s trademark BUY OWNER. Indeed, Complainant

owns and uses the domain name <buyowner.com>. Accordingly, the Panel does

not find this illustration applicable here.

The third illustration of bad faith is registration "primarily for the

purpose of disrupting the business of a competitor." Complainant contends

that this type of bad faith is present; but offers no proof, or even argument,

to support its contention. Rather, its Complaint merely alleges that such bad

faith exists. Unlike in court, where a complaint may allege facts in "notice

pleading" form, a Complaint under the Policy must set forth the supporting

evidence, including a discussion of why paragraph 4(b) of the Policy is applicable.

See Rules ¶ 3(b)(ix). Complainant has not done so. Indeed, other than

the mere fact that Complainant and Respondent operate competing businesses in

the same field, there is no evidence that Complainant’s business has been disrupted,

or that Respondent intended to do so. He denies any such intent; and while his

protestation may be self-serving, there is no contrary evidence upon which to

find him at fault. Accordingly, the Panel does not find this illustration to

be applicable.

The fourth illustrative example of bad faith in the Policy is a respondent’s

use of a domain name in an effort to attract, for commercial gain, Internet

users to the respondent’s web site by creating a likelihood of confusion with

the complainant’s mark. Complainant alleges that this type of bad faith is present.

To be sure, Respondent seeks to attract Internet users to his web site for commercial

gain. What is missing, however, is sufficient evidence that he has done so "by

creating a likelihood of confusion with the complainant’s mark." It is

questionable, as discussed in Section 5(b)(i) above, whether there is any such

likelihood of confusion, let alone whether Respondent had any intent to cause

any such confusion. As the party with the burden of proof on this point, Complainant

has not met its burden.

In sum, the Panel concludes that Complainant has failed to establish that Respondent

has registered and used the Domain Name in bad faith under Paragraph 4(b) of

the Policy.

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that

Complainant has not met its burden of proof under the Policy. It may (or may

not) be that Respondent is infringing Complainant’s federally-registered trademark.

If it is, Complainant’s remedy lies elsewhere – as Respondent correctly points

out, "this is not the place to make that decision." Further evidence

may be needed to prove a trademark infringement case – evidence that cannot

easily be obtained under the Policy, whose role is limited to remedying provable

cases of bad-faith domain name registration, not to resolving all claims of

alleged trademark infringement.

For the above reasons, pursuant to Rule 15, the Panel finds for Respondent,

and decides that Complainant’s request for transfer of the Domain Name is denied.

Michael A. Albert

Sole Panelist

Dated: July 23, 2002

1. In comparing Complainant's mark to the

Domain Name, it is well established that the generic top-level domain, in this

case ".com," must be excluded from consideration as being a generic or functional

component of the Domain Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d

489, 498, (2d Cir. 2000).

2. Neither party offers proof as to how the

domain names and/or trademarks in question are being used. From the Panel's

visit to the Domain Name, it appears it it hosts a web site that operates in

the real estate listing business.

3. The burden of proof on all issues is on

the complainant in a proceeding under the Policy. However, upon a prima facie

showing by the complainant that the respondent has not met any element of Paragraph

4(c), the burden of production of evidence supporting such a defense is on the

Respondent. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,

WIPO Case No. D2000-1306 (January 24, 2001).

More cases by this complainant

• Buy Owner International, Inc. v. Tri-Star Realty — D2002-0408 · buyowners.com · Transfer · 16 Aug 2002