WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buy Owner International, Inc. v. Tri-Star Realty
Case No. D2002-0408
1. The Parties
The Complainant is Buy Owner International, Inc. ("Buy Owner"), a corporation organized and existing under the laws of the State of Florida, having its principal place of business in Fort Lauderdale, Florida, United States of America.
The Respondent is Tri-Star Realty ("Tri-Star"), a business of unknown structure, with an address in Mobile, Alabama, United States of America.
2. The Domain Name and Registrar
The domain name at issue ("Contested Domain Name") is , registered with Network Solutions, Inc., Mountain View, California, United States of America ("Registrar").
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on May 8, 2002, in electronic form. The Center received the hard copy of the Complaint on April 30, 2002. The Center acknowledged receipt of the Complaint on May 3, 2002. An amendment to the Complaint, adding the proper allegations regarding mutual jurisdiction, was sent to the Center on May 29, 2002 (e-mail), and June 1, 2002 (hard copy).
On May 3, 2002, a Request for Registrar Verification was transmitted to the Registrar. The Registrar responded on May 6, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail.
A Formal Requirements Compliance Checklist was initiated by the Center on June 12, 2002, and completed June 12, 2002. The Center determined that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The Panelist has independently reviewed the requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
The Complainant paid the required fees for a single-member Panel on time and in the required amount.
No formal deficiencies having been noted, on June 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of July 2, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from the Registrar and by post/courier to the indicated postal addresses. Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On July 1, 2002, a Response was received from the Respondent.
On July 29, 2002, the Center invited Richard Allan Horning to serve as the Sole Panelist in WIPO Case No. D2002-0408 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning�s Statement of Acceptance and Declaration of Impartiality and Independence was received on July 29, 2002. On July 31, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The projected decision date was August 14, 2002.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.
4. Factual Background
Complainant holds multiple registrations for trademarks containing BUY OWNER as the salient portion, including the registration for the trademark BUY OWNER, Registration No. 1,655,029, in Class 36 for real estate listing services registered on August 27, 1991; the registration for the trademark BUY OWNER & Design, Registration No. 2,071,688, in Class 35 for real estate listing and advertising services, registered June 17, 1997; and the registration for the trademark BUY OWNER & Design, Registration No. 2,071,689, in Class 36 for real estate listing and brokerage services, registered June 17, 1997. Complaint, Annex 3.
Complainant has established a website . The website offers a variety of real estate related products and services. The Complainant purports to do business in many of the states of the United States, including Alabama. Complainant first registered the domain name on September 21, 1995.
Respondent registered the Contested Domain Name on June 23, 1999 (Complaint, Annex 1).
At the time of the submission of the dispute to the Panelist, the website associated with the Contested Domain Name was a commercial website where Tri-Star Real Estate's services were offered. B is described as a "division" of Tri-Star Real Estate, located in Mobile, Alabama, launched by Respondent on September 1, 2000, as a full service database for homesellers and homebuyers.
5. Parties� Contentions
A.Complainant
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
(i) Complainant specifically contends that the Contested Domain Name is confusingly similar to Complainant's registered marks, as the Contested 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 of Complainant's registered marks.
(ii) Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the Contested Domain Name, as Respondent's registration occurred many years after Complainant obtained its trademark registrations for its registered marks.
(iii) Complainant contends the Contested Domain Name should be considered as having been registered and used in bad faith for the following reasons:
1.The Contested Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name. Complaint, Annex 4.
2.The Contested Domain Name was registered for the purpose of disrupting the business of Complainant.
3.By using the Contested Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location. Complaint, Annex 4.
4.Respondent is not making a legitimate non-commercial or fair use of the Contested Domain Name, but in fact is using the Contested Domain Name for commercial purposes in the same field in which Complainant is using its registered marks.
B. Respondent
Respondent has contested the allegations of the Complaint by stating that:
(i)Respondent never heard of when it purchased the Contested Domain Name.
(ii)Respondent spent nearly $8,000 in website development fees.
(iii)Respondent agreed to sell the Contested Domain Name to Complainant last year, only to have Complainant refuse to perform ("try to "weasel" the site for free").
(iv)Respondent does not compete head to head with Complainant.
(v)Respondent did not register the name solely for the purpose of disrupting the business of Complainant.
(vi)Respondent uses the Contested Domain Name for a free listing of homeowners not in competition with the Complainant.
(vii)Respondent contends that the Complainant tried to legally steal the Contested Domain Name, after Respondent's counsel advised Respondent not to sign the agreement that Complainant had prepared.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist 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 the Complainant and Respondent are domiciled in the United States, and since United States� courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1)that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2)that the Respondent has no legitimate interests in respect of the domain name; and,
3)that the domain name has been registered and used in bad faith.
The Panelist finds that domain name at issue is either identical or confusingly similar to the registered trademarks of Complainant. Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott International, Inc. v. John Marriot, NAF Case No. FA0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; Microsoft Corporation v. Global Net 2000, Inc, WIPO Case No. D2000-0554; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; The Chancellor, Masters and Scholars of the University of Oxford v. CQ, WIPO Case No. D2001-0920.
Given the virtual identicality between Complainant's BUYOWNER mark and the Contested Domain Name, likelihood of confusion must be presumed. Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF0104.
Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. The Contested Domain Name was registered by Respondent long after Complainant's registration of its trademarks, and long after Complainant registered BUYOWNER.COM, used as the address for Complainant's website. The Panelist finds that Respondent has no rights or legitimate interest in the domain name.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith". Those circumstances are:
(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 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.
It must be presumed that Respondent was aware of the Complainant's registered marks when Respondent registered the Contested Domain Name. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO Case No. D2001-1226; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.
Complainant and Respondent compete, for commercial gain, in the same product and service market, in the same geographic region of the United States, using virtually identical domain names identical to a series of registered trademarks owned by Complainant. In such cases the Panelist is entitled to presume that the "late comer" intends to traffic on the good will of the Complainant and to create confusion as to source, sponsorship and affiliation. That presumption has not been rebutted.
Respondent's bad faith is also evidenced by Respondent's attempt to secure payment from Complainant for the return of the domain name.
On December 4, 2001, Respondent contacted Complainant via e-mail and solicited Complainant's interest in purchasing the Contested Domain Name. Complaint, Annex 4.
On December 5, 2001, Respondent sent to Complainant a form of agreement, wherein Respondent agreed to sell the Contested Domain Name to Complainant for $5,000. Apparently, Complainant's counsel later prepared an agreement which, according to e-mail dated December 23, 2001, Respondent refused to sign. Respondent's refusal to sign was reasserted in an e-mail dated December 27, 2001, and January 10, 2002. On January 18, 2002, in an e-mail to Complainant, Respondent stated that if the deal was not closed by Friday, January 18, 2002, Respondent would withdraw the offer to sell the domain, at any price. On January 22, 2002, Respondent raised the price to $5,250.
This Panelist is aware of Panelist Michael A. Albert's decision in Buy Owner International Inc. v. John Frank, WIPO Case No. D2002-0407 that involved the domain name. The Complainant here was the Complainant in WIPO Case No. D2002-0407. This Panelist notes that Panelist Albert determined that the Complainant in that case had failed to present sufficient proof on all of the elements that it needed to prove in order to prevail under the Policy, Rules and Supplemental Rules.
This Panelist agrees with Panelist Albert that the Complainant owns a valid trademark and trademark registration for the mark BUYOWNER in the field of real estate listing services.
Unlike the case in WIPO Case No. D2002-0407, here the Respondent has merely added the letter "s" to the mark BUYOWNER. Here there is a substantial likelihood of confusion arising out of the mere addition of an "s" to Complainant's registered trademarks.
Unlike the factual situation in WIPO Case No. D2002-0407, the Respondent here offered to sell the domain name and is in fact using it in a commercial enterprise that competes with Complainant. Given the identical nature of the services offered by Complainant and Respondent, this Panelist believes that there is inevitable disruption of Complainant's business. In reaching this conclusion it must be remembered that Complainant has long-registered trademarks, now incontestable, and registered the domain name in 1995, some five years before Respondent commenced its activities.
Under these circumstances the likelihood of confusion is inherent. I find that in this case Complainant has carried its burden of proof in establishing that Respondent has registered and used the Contested Domain Name in bad faith.
7. Decision
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that 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(i) of the Policy, the Panelist requires that the registration of the domain name be transferred to the Complainant.
Richard Allan Horning
Sole Panelist
Dated: August 16, 2002
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