WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bang & Olufsen America, Inc. v. BeoW
Case No. D2001-0159
1. The Parties
The Complainant in this administrative proceeding is Bang & Olufsen America, Inc. whose principal place of business is located at 1200 Business Center Drive, Suite 100, Mt. Prospect, Illinois, 60056, USA. The Respondent in this case is BeoW whose address is 351 Old Newport Blvd., Suite 470, Newport Beach, CA 92663, USA.
2. The Domain Name and Registrar
The domain name at issue is "beow" which is registered with Network Solutions in Herndon, Virginia, USA.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 1, 2001.
On February 5, 2001, a Verification Response was received from Network Solutions which served to: (1) confirm that Network Solutions was in receipt of the notification of the domain name dispute; (2) confirm that Network Solutions is the registrar of the domain name; (3) confirm that Respondent 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 name, the technical contact, and the administrative contact.
On February 6, 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 three member Panel were paid by the Complainant on time and in the required amount.
A Notification of Complaint and Commencement of Administrative Proceedings was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier and email), dated February 6, 2001. The Notification set a deadline of February 25, 2001, by which the Respondent could make a Response to the Complaint. Respondent did not submit a Response by that date. A Notification of Respondent Default was sent by the WIPO Center to Respondent (post/courier and email) and to Complainant (email) on February 27, 2001. Respondent submitted a Response on March 7, 2001. The WIPO Center notified Respondent that because the Response was not submitted in accordance with the deadline, it would be up to the Panel to determine whether to consider the Response. Complainant submitted a Rebuttal to Respondent�s Response on March 9, 2001.
On March 15, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel. Taking into consideration the panelist nominations made by the parties, the WIPO Center appointed Paul E. Mason and Mark Van Buren Partridge to serve as Panelists and Roderick M. Thompson to serve as Presiding Panelist. All three Panelists 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 March 15, 2001, was March 29, 2001.
4. Factual Background
Bang & Olufsen America, Inc., Complainant, is a subsidiary of Bang & Olufsen audiovisual a/s, which is a subsidiary of Bang & Olufsen a/s (together "B&O"). B&O is in the business of manufacturing, selling, distributing and servicing consumer electronic products, and has done so since 1925.
Complainant has provided evidence that B&O has registered various U.S. trademarks that begin with the term "beo". These trademarks include BEOCENTER, BEOCOM, BEOCORD, BEOGRAM, BEOLAB, BEOLINK, BEOLIT, BEOLOGIC, BEOMASTER, BEOSOUND, BEOVISION, BEOVOX. Complainant does not, however, claim trademark rights to the term "beoworld".
Respondent, Beow, is the current Registrant of the domain name "beow". Respondent is not an authorized B&O dealer, but instead obtains B&O products through alternative channels and offers these products for sale on its website.
5. Parties� Contentions
A. Complainant
Complainant asserts that the domain name "beow" is confusingly similar to B&O�s trademarks. Although the domain name is not identical to any of the B&O trademarks, Complainant claims that the "beo" name, which is included in the disputed domain name, is strongly associated with B&O. In support of its contention that the domain name is confusingly similar to its trademarks Complainant asserts that: Respondent offers B&O products for sale in the same geographic market as B&O and to the same customers as B&O; Respondent states on its website that the products sold are "factory" despite the fact that the products are not sold factory direct; Respondent has not taken any action to revise such terms despite Respondent�s offer to do so; and that Respondent�s website does not contain effective disclaimers as to its lack of affiliation with B&O.
Complainant asserts that Respondent is not an authorized dealer of B&O, is not a licensee of B&O, and is not authorized by B&O to market, sell or service B&O products. Complainant claims, therefore, that Respondent has no rights or legitimate interest in the disputed domain name.
Complainant alleges that Respondent is using the domain name to attract users by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent�s web site. According to Complainant, Respondent�s use of the domain name was undertaken to trade off the reputation and goodwill of B&O. Consequently, Complainant claims that Respondent registered and is using the domain name "beow" in bad faith.
B. Respondent
Respondent disputes Complainants assertions. Respondent claims that the real purpose of the Complaint is to prevent Respondent from conducting a parallel resale of Complainant�s goods and that the Complaint therefore falls outside the scope of the Policy.
As to Complainant�s assertions under the Policy, Respondent contends that the disputed domain name is not confusingly similar to Complainant�s trademarks. Respondent notes that "beow" has only three letters in common with the trademarks listed by Complainant and that there is no phonetic or literal similarity. Respondent claims that Complainant�s assertion of confusing similarity based on the labeling of products on Respondent�s website falls outside the scope of the Policy as it does not directly concern the domain name but instead concerns the validity of Respondent�s business. Moreover, Respondent indicates it has offered to replace the term "factory" with an alternative term that indicates merely that the products are new rather than used, thus obviating any possible confusion.
Respondent asserts that the domain name corresponds precisely to the name of Respondent�s business, and it is therefore legitimate that Respondent has registered and used the name. As to Complainant�s allegations of bad faith, Respondent indicates that it registered the name for the sole purpose of identifying its business on the Internet. Additionally, Respondent claims that it clearly indicates on its website that the business is not associated with B&O and that Respondent is not an authorized dealer of B&O.
6. Discussion and Findings
A. Consideration of the Response and Complainant�s Rebuttal to the Response
As noted in the Procedural History, the Respondent did not submit its Response by the required deadline. In this situation, it is up to the Panel to determine whether or not the Response and the Complainant�s Rebuttal will be considered. Although the Respondent was tardy in submitting its Response, Complainant has submitted a Rebuttal to that Response and therefore has had an additional opportunity to make its case; each party has had its opportunity to be heard. This Panel therefore decides that it will consider all of the materials submitted in determining whether to grant Complainant�s request.
B. Applicable Rules and Principles of Law.
Paragraph 15(a) of the Rules sets out the principles the Panel is to use in rendering its decision: "A Panelist 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 legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and used in bad faith.
C. Application of Paragraph 4(a) to the Facts.
1. Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. Complainant alleges that Respondent is using the domain name to attract users by creating a likelihood of confusion as to source, sponsorship, or affiliation. The facts, however, do not support a conclusion that Respondent is deliberately attempting to create confusion. First, the fact that Respondent's name is not identical to any of the marks owned by Complainant supports Respondent's claim that it is not deliberately seeking to create confusion and it is not apparent from the evidence before us that Internet users are initially likely to believe that the domain name "beow" is owned or authorized by Complainant. In addition, Respondent clearly notes on its website that it is not an authorized B&O dealer and that it is not affiliated with B&O. Although disclaimers may not always suffice to negate an allegation of bad faith, in this case, the disclaimers used by Respondent appear to accurately describe its business and further support its claim that it is not deliberately seeking to create and profit from confusion, particularly since the domain name is not identical to any of Respondent's marks.
Complainant additionally asserts that Respondent�s use of the domain name was undertaken to trade off the reputation and goodwill of B&O. Again, despite the assertion by Complainant, the evidence does not support a finding that Respondent is using the domain name to trade off the good will of B&O. Instead, it appears that Respondent has merely chosen a domain name that accurately depicts its business � the sale of B&O products.
Although Complainant has alleged bad faith, Complainant has not provided sufficient proof that Respondent has registered and used the domain name in bad faith. The Panel therefore finds that Complainant has not fulfilled its burden of proving bad faith registration and use of the domain name.
2. Respondent�s rights and legitimate interest in the domain name
Complainant�s sole allegation as to Respondent�s lack of legitimate interest in the domain name is that Respondent is not an authorized B&O dealer. It is not necessary, however, for a domain name Registrant to be authorized to use the name by the trademark holder in order to show that it has a legitimate interest in the name. Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant�s rights or legitimate interests in the name. One such circumstance is showing that Respondent is commonly known by the domain name. In this case, the domain name is identical to the trade name used by Respondent thus raising an inference of a legitimate interest. This Panel is not suggesting that a domain name registrant may create a legitimate interest after registration of the domain name simply by selecting a trade name that corresponds to the registered name. In this instance, however, Complainant does not allege or provide evidence that Respondent�s choice of trade name was made as an attempt to avoid a transfer under this Policy, or for any other illegitimate purpose.
Respondent may also demonstrate a legitimate interest in the domain name by demonstrating use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The evidence indicates that Respondent offers B&O goods for sale at its website, and did so prior to notice of any dispute. A simple offering of any goods or services does not necessarily constitute a bona fide offering of goods or services. This is particularly true if it appears that a domain name registrant is acting in bad faith and is merely attempting to circumvent the Policy. As noted above, however, it does not appear from the evidence presented by Complainant that Respondent in this case is acting in bad faith. Respondent�s business is the sale of B&O products via its website.
Complainant contends that Respondent�s business infringes and dilutes B&O�s registered marks. It should be noted that this Panel has limited jurisdiction dedicated to deciding domain name disputes under the narrow criterion specified in the Policy. It is not the role of this Panel to determine the outcome of a trademark infringement dispute between a manufacturer and a reseller. Nothing in this decision, however, precludes either party from pursuing its rights in the appropriate court of law.
Under the Policy, Complainant bears the burden of proving that Respondent does not have a legitimate interest in the domain name. Complainant has failed to present sufficient evidence to demonstrate a lack of a legitimate interest. This Panel therefore finds that Complainant has not met its burden of proving that Respondent does not have a legitimate interest in the domain name.
3. Identical or Confusingly Similar to Trademark
There is some question as to whether the domain name "beow" is confusingly similar to the B&O trademarks that include the term "beo". Many of Complainant�s assertions as to confusing similarity relate to a determination of consumer confusion that would require additional factual inquiry before this Panel could make an informed determination. Given the Panel�s conclusion that Complainant has not met its burden in relation to showing the existence of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for the Panel to determine whether the domain name is confusingly similar to a trademark in which the Complainant has rights.
7. Decision
This Panel decides that Complainant has not shown that the Respondent has no legitimate interests in the domain name. Additionally, Complainant has not shown that the domain name was registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name "beow" remain with the Respondent.
Roderick M. Thompson
Presiding Panelist
Paul E. Mason
Panelist
Mark Van Buren Partridge
Panelist
Dated: March 29, 2001
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