WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bookstore Manager, Inc. v. Infinity Development Corp.
Case No. D2001-1340
1. The Parties
The Complainant in this administrative proceeding is Bookstore Manager, Inc., a Texas Corporation, with a principal place of business at 201 Fannin Street, Abilene, TX 79603, U.S.A. According to Network Solutions� who-is database, the Respondent in this administrative proceeding is Infinity Development Corporation, with an address of 2472 Walnut Street #315, Cary, NC 27511, U.S.A.
2. The Domain Name and Registrar
This dispute concerns the domain name (the "Domain Name"). The registrar with whom the Domain Name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A. (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 9, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 15, 2001.
A Formal Requirements Compliance Checklist (the "Checklist") was completed by the assigned WIPO Center Case Administrator on November 26, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"). According to the Checklist, the required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on November 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of December 16, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail and by express courier. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On December 18, 2001, having received no Response from the Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
Having received this Panelist's Statement of Acceptance and Declaration of Impartiality and Independence, on January 11, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for January 25, 2002. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The following facts appear from the Complaint and have not been disputed by the Respondent. Complainant has had common law rights in the trademark BOOKSTORE MANAGER (the "Trademark") since about January 1989. The Trademark was used and is used by Complainant in connection with its computer software product for Christian bookstores, which provides computerized point of sale, inventory control, and managerial accounting software system. Complainant advertises the software in magazines, trade publications, direct marketing, and at trade shows. Since 1989, Complainant has sold its software to over nine hundred (900) Christian bookstores in the United States. The software has also been featured in numerous magazine articles. On August 23, 1999, the Complainant was granted a US trademark registration for the Trademark.
Respondent is a competitor of Complainant and also sells point-of-sale and inventory control software to Christian bookstores, religious gift stores, and church supply stores. There is no evidence that indicates that Respondent is known, commonly or otherwise, by the Domain Name or any name corresponding to the Domain Name. No evidence indicates that Respondent has acquired any legitimate rights whatsoever (including trade/service mark rights) in the Domain Name or any name corresponding to the Domain Name. Indeed, an officer of Respondent, Chris Aves, confirmed in an e-mail correspondence to Complainant�s counsel dated October 24, 2001, that the Domain Name was registered basically to annoy the Complainant. The Domain Name was registered in 1999.
5. Parties� Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "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." Since both parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark 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 is being used in bad faith."
The Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to the service mark in which the Complainant has rights. It may be a close question as to whether the Complainant�s rights in its registered Trademark (as opposed to its unregistered Trademark) predate the registration of the Domain Name by Respondent. In this regard, the Panel notes that under United States law the preclusive effect of an unregistered mark may be substantially less than that of a registered mark. However, given that the use of the unregistered Trademark clearly predates Respondent�s use and Respondent has not contested the Complaint, the Panel is inclined to agree with Complainant�s allegations in this regard.
The Domain Name also violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent has not received any permission or consent to use the service mark from Complainant; (ii) other than the registration of the Domain Name, Respondent has not used the Domain Name in any site or business; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name "Bookstoremanager".
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
"b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location."
The evidence is clear that Respondent is a competitor of Complainant and that it registered the Domain Name "to basically annoy the folks at BSM [Complainant]." Respondent's email to Complainant, dated October 24, 2001. Accordingly, the Panel finds that the Domain Name violated Paragraph 4(b)(iii). The Panel therefore concludes that the Domain Name violates Paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that Respondent�s ownership of the Domain Name violates Paragraph 4(a) of the Policy.
7. Decision
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent�s Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Name be transferred to the Complainant.
Thomas D. Halket
Sole Panelist
Dated: January 17, 2002
Full & Egal Universal Law Academy