WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubid, Inc. v. Auction Block, Inc.
Case No. D2002-0520
1. The Parties
The Complainant is Ubid, Inc., a corporation organized under the laws of the State of Delaware, United States of America, with its principal place of business at Chicago, IL, United States of America ("uBID" or "Complainant").
The Respondent is Auction Block, Inc., a corporation organized under the laws of the State of Illinois, United States of America with it principal place of business being at Chillicothe, IF, United States of America ("Auction Block" or "Respondent").
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is (the "Domain Name"). The Registrar of the Domain Name as at the date of the Complaint is Network Solutions ("Network Solutions" or "Registrar").
3. Procedural History
The Complaint submitted by Complainant was received on June 4, 2002 by e-mail and in hardcopy on June 6, 2002 by the WIPO Arbitration and Mediation Center ("WIPO Center"). The WIPO Center determined that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers on October 24, 1999 (the "Policy"). Further, the WIPO Center verified that the Complaint also satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as well as the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), which such rules implement the Policy. Payment to the WIPO Center in the required amount was made by the Complainant.
On June 6, 2002, the WIPO Center notified the Registrar that the Complaint had been filed. In response, on June 11, 2002, the Registrar confirmed to the WIPO Center that, inter alia, the Domain Name was registered with the Registrar, the Respondent was the registrant of the Domain Name at issue, the Policy applies to the dispute at issue, and that the language of the registration agreement and hence the dispute is English.
In accordance with Paragraph 2(a) of the Rules, the WIPO Center notified the Respondent on June 12, 2002, of the filing of the Complaint and the commencement of the Administrative Proceeding. This Notice advised the Respondent that Respondent had until July 2, 2002, to respond to the Complaint. On July 10, 2002, the WIPO Center transmitted the case to the Administrative Panel consisting of a single member, James H. Grossman of San Francisco, California, United States of America. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence in accordance with the Rules and agreed to forward a decision in accordance with Paragraph 15 of the Rules on or before July 24, 2002.
On July 19, 2002, Complainant filed a request by e-mail and then by fax on July 22, 2002, requesting the suspension of the proceeding. In Procedural Order No. 1 dated July 24, 2002, the Panel suspended the proceeding until August 23, 2002, and advised Complainant that the proceedings would be deemed automatically terminated if the WIPO Center did not receive a request by such date to re-institute proceedings. Notwithstanding the suspension of the proceedings, Respondent filed a response with the WIPO Center on July 19, 2002, seventeen days after such response was due pursuant to the notification to Respondent from the WIPO Center. On July 23, 2002, Complainant 1) submitted a request to withdraw the request for suspension as a result of Respondent's filing and, according to Complainant, Respondent's failure to respond to Complainant's communication regarding a settlement and 2) filed a submission in connection with Respondent's late-filed response. Accordingly, on July 25, 2002, the Panel advised the WIPO Center of the following to be communicated to the parties:
1. The arbitration was reinstated.
2. The Panel within its discretion will determine whether or not to consider Respondent's late response.
3. The Panel within its discretion will determine whether or not to consider Complainant's submission in connection with Respondent's late-filed response.
4. The Panel will render its decision on or before August 14, 2002.
Except for the above, there have been no additional submissions by either party.
4. Factual Background
The following is asserted as fact by the Complainant:
Complainant is an Internet auction company that auctions a variety of goods and services. Both the Complainant and Respondent offer access to similar goods and services and both target the same market. Complainant, as the assignee of the UBID mark (and its predecessor in interest , Creative Computers, Inc.), has been using the UBID mark to identify its Internet auction services since December, 1997. Complainant has invested extensive resources to publicize the UBID mark so as to ensure its automatic identification in the minds of consumers with the Complainant's services. The Complainant obtained U.S. trademark registrations for the UBID marks in 1999 (Reg. Nos. 2229515 and 2234975). On February 3, 2000, Respondent registered the contested Domain Name although, according to Complainant, there is no indication that the Respondent had used "ubidstore" as its company name nor was Respondent commonly known by the Domain Name prior to its registration. Respondent use of the Domain Name was directing users to a web page offering online auction services directly competitive with Complainant's services. Complainant also questions the accuracy of the name and address information filed by Respondent with the Registrar.
On April 3, 2002, Complainant sent a cease and desist letter to Respondent demanding that Respondent immediately discontinue its infringement of Complainant's trademarks and that Respondent transfer the Domain Name to Complainant. On April 22, 2002, Respondent replied through counsel denying some of the allegations and offering to sell the name for its expenses relating to the use of the Domain Name. The amount of the offer was $10,057.19 with a breakdown of expenses attached to the letter.
The following is asserted as fact by the Respondent:
Respondent alleges it has been attempting to resolve the matter through negotiation and that is the reason for the delay in its response. Further, Respondent states it has ceased operation of the Domain Name site and all references to this cite are off the servers and, accordingly, Respondent's voluntary termination of the use of the Domain Name makes the demand for the transfer of the Domain Name unnecessary. Respondent confirms it registered the Domain Name in 2000 but denies any awareness of the existence of uBID, Inc. prior to contact regarding this dispute. Respondent states that it selected the Domain Name because it described the services provided, not to deceive the public. Respondent calls to the Panel's attention that the April 3, 2002, letter from Complainant was sent over two years after the initial registration of the Domain Name.
5. Parties' Contentions
A. Complainant
Complainant argues that the Domain Name should be transferred to Complainant because all of the three elements required by Paragraph 4(a) of the Policy are present, namely, (i) Respondent�s Domain Name is "identical or confusingly similar to Complainant's registered marks," (ii) Respondent is not a licensee of the Complainant, nor is it authorized to use the Complainant's mark and (iii) Respondent has registered and used the contested Domain Name to directly compete with Complainant's auction services and divert customers, demonstrating Respondent's bad faith registration and use of the Domain Name.
Complainant states that the confusing similarity between the contested Domain Name leads consumers to the belief that the contested website is provided by, endorsed by, or affiliated with the Complainant. The only difference between the two names is the addition of the generic word "store" after Complainant's mark. Complainant offers prior authority to the effect that the addition of a generic word to an established trademark is not enough to avoid a finding of confusing similarity under Paragraph 4(a)(i) of the Policy. (eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 and AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927). With regard to Respondent's having no legitimate interest in the Domain Name, Complainant advises that Respondent 1) is not a licensee in any respect of Complainant and thus any use is unauthorized; 2) does not own any registered or common law marks containing the terms "ubid" or "ubidstore"; and 3) has not been commonly known by the contested Domain Name. Additionally, it is Complainant's position that Respondent registered the contested Domain Name for the purpose of intentionally diverting internet traffic to its website and thus trading off the goodwill of the Complainant. This is in addition to the fact that Respondent had constructive knowledge of Complainant's trademark rights either through failure to conduct a proper search or intentionally proceeding with the Domain Name with knowledge of the trademark. Complainant cites two prior cases relating to bad faith as a result of such actions by Respondent (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Kate Spade LLC v. Damstadter Designs, WIPO Case No. D2001-1384. Finally, according to Complainant, Respondent�s having provided false information in its domain name application as well as the excessive demand regarding costs associated with registering and using the Domain Name is also evidence of bad faith and warrants transferring the Domain Name to Complainant.
B. Respondent
Respondent's only argument with regard to the issue of whether the Domain Name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights is that the term UBID is by itself a weak trademark and is a generic and descriptive term. With regard to rights or legitimate interests in respect of the Domain Name, Respondent advises it is no longer using the Domain Name. While Respondent admits it provides the same services and competes, it denies the Domain Name is confusingly similar and all of the other allegations of Complainant regarding bad faith.
6. Discussion and Findings
With regard to the issue of whether the Domain Name is identical or confusingly similar to Complainant�s trademarks, the Panel takes notice of the fact that the Complainant has received trade mark protection for the Domain Name and it is not the role of this Panel to reconsider whether this trademark is generic and/or descriptive as alleged by Respondent. The Panel agrees with the view of prior panels to the effect that the adding of a generic word to an established trademark is not enough to avoid a finding of confusing similarity under Paragraph 4(a)(i) of the Policy. The Panel is of the view that the Domain Name clearly creates consumer confusion. The Panel finds that the Complainant has proven Paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. Respondent has described its intended use of the Domain Name for various business purposes as described above. Both parties agree as to the similarity of the businesses of the parties and it is arguable that Respondent has some legitimate interest in using such a name. However, the registration of the Domain Name occurred more than a year after one trademark was registered and slightly less than a year after the other trademark registration. Respondent had not used the Domain Name or any similar name, to the knowledge of the Panel, in its business prior to the date of registration. The Panel agrees with prior decisions to the effect that the Respondent must be considered to have had constructive knowledge of the trademarks of Complainant and, further, that Respondent has no license or other permission to use the Domain Name from Complainant. Further, the Panel has confirmed for itself that the Domain Name used for the benefit of Respondent is no longer in use as of the date of this opinion. The Panel does not agree that this lack of use should be considered in this instance as a factor in favor of Respondent's prior or current legitimate use of the Domain Name or as part of any other contention of Respondent. The Panel finds that the Complainant has proven Paragraph 4(a)(ii) of the Policy.
The Panel agrees with Complainant's contentions described above that Respondent has registered and is using the Domain Name in bad faith for the reasons set forth in the Expedia and Kate Spade cases referred to above. Respondent has merely added a generic word to an existing trademark to create the Domain Name. While the Panel is not convinced as to the reasonableness of the expenses set forth in the attachment to Respondent's letter, any final determination of these numbers would require further inquiry and thus the Panel makes no finding in this regard. However, Respondent's providing false contact information together with the amount of the alleged expenses cannot be seen as evidence of good faith.
7. Decision
The Panel has found that all of the requirements of Paragraph 4 of the Policy have been proven by the Complainant. However, the Panel does recognize Respondent's argument that the demand letter of April 3, 2002, from Complainant was sent more than two years after the registration of the Domain Name by Respondent and there is no evidence from Complainant as to the reason for this delay. Further, the Panel takes notice of certain discrepancies (e.g. reference to use of the mark since May 1998 in the letter from Complainant of April 3, 2002, as compared with the 1997 date in the Complaint). Nevertheless, the Panel is not persuaded by these lesser arguments of the Respondent when compared with Complainant having proven the requirements of Paragraph 4 of the Policy.
Accordingly, in accordance with the remedy provided in Paragraph 4(i) of the Policy, the Panel requires that the domain name be transferred to the Complainant.
James H. Grossman
Sole Panelist
Dated: August 13, 2002
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