WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIMBO S.A. v. Lars Taylor
Case No. D2003-0406
1. The Parties
The Complainant is the Spanish company BIMBO S.A., domiciled in Barcelona, Spain.
The Respondent is Mr. Lars Taylor, domiciled in California, United States of America.
2. The Domain Name and Registrar
The domain name involved in this proceeding is .
The Registrar of the domain name is Dotster, Inc.
3. Procedural History
This is an administrative proceeding pursuant to the Restrictions Resolution Policy for ".BIZ" adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, (the "RDRP"), the Supplemental Rules for Restrictions Dispute Resolution Policy for ".BIZ" ("the Supplemental Rules for RDRP") and the Uniform Domain Name Dispute Resolution Policy ("the UDRP") adopted by ICANN on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules for UDRP") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules for UDRP") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was filed by e-mail with the Center on May 27, 2003, and in hard copy on May 28, 2003. On May 28, 2003, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2003, the Registrar confirmed that the Respondent is the registrant. The Center satisfied itself that the complaint complied with the formal requirements of the RDRP, the UDRP, the Rules for UDRP and the Supplemental Rules for RDRP and that the payment was properly made.
The Center satisfied itself that the complaint was properly notified to the Respondent in accordance with the RDRP, the UDRP, the Rules for UDRP, the Supplemental Rules for RDRP and the Supplemental Rules for UDRP. The proceeding commenced on June 6, 2003. The Respondent timely filed the response by e-mail on June 26, 2003, and in hard copy on July 3, 2003.
The Center appointed Miguel B. O�Farrell as the sole panelist in this matter on July 14, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules for UDRP, paragraph 7. The date scheduled for the issuance of the Panel decision is July 28, 2003.
The language adopted in this proceeding is English.
4. Factual Background
The Spanish company BIMBO S.A. was formed in 1964, and is now one of the largest organizations in the food business of the Iberian Peninsular. Thanks to their popularity BIMBO products have consolidated their position as market leaders in the categories of industrial bakery, buns and patisserie products.
BIMBO S.A. is the owner of the following Spanish trademark registrations:
BIMBO (and design), registration No. 2.244.562 granted on October 20, 2000, covering "restaurant, bar, restoration (feeding); temporal lodging" in class 42.
BIMBO (and design), registration No. 2.267.528 granted on April 24, 2000, covering "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats" in class 29.
BIMBO (and design), registration No. 1.252.001 granted on September 5, 1989, for twenty (20) years, covering "clothing, footwear, headgear" in class 25.
BIMBO (and design), registration No. M0782868 granted on July 27, 1976, and renewed on September 19, 1996, covering "Chocolates, pastas, starches, bread, sugars, cocoa, tea, coffees and its substitutes, bonbons, candies, confectionery, sweets, biscuits, flans preparations, syrups, ices and sherbets and chewing gum" in class 30.
BIMBO (and design), registration No. M0908160 granted on November 5, 1979, and renewed on June 26, 2000, covering "paper and paper goods, cardboard and cardboard goods; printed matter, newspapers, books, bookbinding material, photographs; stationery, adhesive material (for stationery); artist�s materials; brushes; type and office machines (except furniture); instruction and teaching material (except apparatus); cards; print characters; editions and publications not periodical" in class 16.
BIMBO (and design), registration No. 1.252.002, granted on September 5, 1989, for twenty (20) years, covering "clothing, footwear, headgear" in class 25.
BIMBO S.A. is the owner of the following domain names:
The Respondent has registered the domain name on November 8, 2001.
5. Parties� Contentions
A. Complainant
The Complainant asserts that:
The domain name was registered on November 8, 2001, and that after 18 months is still inactive and therefore it is evident that the same is not being used primarily for a bona fide business or commercial purpose.
On November 14, 2002, the attorneys for the Complainant contacted Mr. Taylor in order to know if he would be interested in selling the domain name . They received an e-mail from Mr. Taylor in the following terms: "I might be interested in selling it. I planed to develop it but am unable to right now. How much are you offering?" On November 25, 2003, the attorneys for the Complainant informed Mr. Taylor that they offered US$360 for the domain name. On November 25, 2003, Mr. Taylor replied: "400 $ and we have a deal." On January 23, 2003, the attorneys for the Complainant requested an urgent reply related to the purchase of the domain name offering Mr. Taylor $ 400 for the domain name. On February 6, 2003, Mr. Taylor responded: "I am so sorry that I did not get to you earlier. Yes I will sell this to you for 400. I will try to get the paperwork started as soon as possible. Sorry about the wait. Hopefully you are still interested. Tell me if there is any other concerns or questions and as soon as I get the paperwork done, we�ll being the transaction, so that it will be more smooth. Thanks once again." The Respondent never transferred the domain name. Therefore, it is evident that the domain name is not intended to be used for a bona fide business or commercial purpose as the same was registered solely for the purpose of selling it for compensation.
The domain name is identical to the trademarks owned by BIMBO S.A. and surely will create a confusion on the market place with regard to its origin.
As Mr. Taylor registered the domain name for the purpose of selling it, it is evident that the domain name has been registered in bad faith. The impossibility to use the domain name by its legitimate owner (BIMBO S.A.) implicates that the domain name was registered in bad faith.
Finally, the Complainant requests that the domain name be transferred to the Complainant.
B.Respondent
The Respondent denies Complainant�s contentions and alleges that:
It has been a protected right of domain name holders to not have the domain name active. Many companies hold inactive domains. The fact that has not yet had an established business associated with it does not indicate that it was not registered for bona fide business purposes. Due to particular circumstances (unexpected military deployment, subsequent military duties, etc) at this time the Respondent has neither the time nor the funds to develop a profitable business using the domain name. If it were possible, the Respondent would have waited to register the domain name until he was prepared to establish the business, thus avoiding renewal fees. However, by the time he was prepared to devote time and resources, there would be very few useable ".BIZ" domain names remaining.
The Respondent did not contact the Complainant concerning the sale of . In fact, he had not even considered the sale until he received Complainant�s unsolicited e-mail. Due to the circumstances described above and to the fact that Respondent has registered both and , he and his wife decided to sell the domain name in order to avoid registration penalties and recoup registration costs and the time and resource investment they had made in acquiring the domain name. The ".BIZ" registration process did not go smoothly: several registrars had "pre-registration" offers and some required paying a non-refundable, though nominal, fee to "pre-register" the domain name. As Respondent had to "pre-register" through several websites he believed US$400 approximated the time and resources he invested in acquiring the domain name.
The word bimbo does not violate any trademark rights because it is a common word. According to Webster�s unabridged dictionary, bimbo is slang for 1. A disreputable man or woman. 2. A morally loose woman; tramp. The market the Respondent plans to use this name in is much closer to the adult/novelties/humor market than the baked goods market and therefore the name and the use of it would not be confusing in the market place.
There was a period of time before ".BIZ" registrations were available to the general public that trademark holders could register their trademarked .BIZ names. This period lasted for several months and it was only after trademark holders had sufficient opportunity to register the names that the general public could register them. When Respondent registered , a common English word, he had no reason to believe that it would give rise to a trademark dispute.
Complainant contends that the fact that the domain name is inactive indicates that Respondent has no bona fide business purpose. Respondent finds interesting to note that, according to the complaint, BIMBO S.A. holds the domain name , which is inactive, and clearly, BIMBO S.A. does not feel that holding an inactive domain name is an indication that they do not intend to use it.
The original intention of the ".BIZ" release was to increase the number of available web domains. It made it clear that ICANN believed having different companies with the same name and different extensions, i.e. and , would be good for Internet business.
As there appears to be an Italian company operating under , Respondent�s use of would not present any more a threat of confusion in the marketplace. The use the Respondent intends for the name is in a very different market indeed. Respondent is willing to sign a statement indicating that he will not try to sell baked goods under the domain name .
Finally, Respondent did not offer to sell the domain name to the attorneys for the Complainant. They sent an unsolicited offer to buy it solely for the purpose of entrapping Respondent into saying or doing something that would give them justification to file this complaint.
6. Discussion and Findings
To qualify for cancellation or transfer, according to paragraph 4(a) of the RDRP a Complainant must prove that the conflicting domain name is not being or will not be used primarily for a bona fide business or commercial purpose.
In addition, the Complainant must prove each element of paragraph 4(a) of the UDRP, namely:
(i)the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii)Respondent has no rights or legitimate interests in respect of the domain name; and
(iii)the disputed domain name has been registered and is being used in bad faith.
A.Preliminary Matters
The Panel notes that the Response is not in compliance with paragraph 5(b)(viii) of the Rules for UDRP since the certification required followed by the signature of the Respondent or its authorized representative is lacking.
Despite this procedural deficiency, in accordance with paragraph 10 of the Rules for UDRP, the Panel shall ensure that each party is given a fair opportunity to present its case. In this connection, this Panel finds that it would be appropriate to give the Respondent an opportunity to remedy the deficiencies taking into consideration that the Complainant has an opportunity to correct its complaint if it is filed with deficiencies. (See paragraph 4(b) of the Rules for UDRP). Nevertheless, as the decision in this case would have been the same had the Panel considered the uncertified copy, the Panel considers unnecessary to give the Respondent an opportunity to remedy the shortcoming. See Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654.
B. Identity or Confusing Similarity
The domain name is .
The Complainant owns the trademark registrations mentioned in paragraph 4 of this decision.
Consequently, the Panel finds that the Complainant has proven the first element required in paragraph 4(a) of the UDRP.
C. Rights or Legitimate Interests
In accordance with paragraph 4(a) the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
In this case, the Complainant does not even assert that the Respondent has no rights or legitimate interests.
This Panel finds that proving "a negative proposition can be particularly difficult" and agrees "that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant�s rights or interests, if any, in the domain names lies most directly within the registrant�s knowledge" and that "once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name" (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, in this case, the Complainant does not even argue that Respondent has no rights or legitimate interests.
In consequence, the Panel finds that the Complainant fails to prove the second element required in paragraph 4(a)(ii) of the UDRP.
D. Registered and Used in Bad Faith
The Complainant asserts that since Mr. Taylor registered the domain name for the purpose of selling it, it is evident that the domain name has been registered in bad faith; and that the impossibility to use the domain name by its legitimate owner (BIMBO S.A.) implicates that the domain name was registered in bad faith.
The Panel finds that there is no evidence for proving that Respondent registered the domain name with the purpose of selling it to the Complainant. Complainant contacted Respondent in November 2002, one year after Respondent registered , in order to know if Respondent would be interested in selling the domain name. If Respondent registered the domain name with the purpose of selling it to Complainant, it could be assumed that probably Respondent would have contacted Complainant sometime within the year after he registered rather than waiting to be approached by the Complainant.
Consequently, the Panel finds that the Complainant fails to prove the third element required in paragraph 4(a)(iii) of the UDRP.
E.RDRP: Bona Fide Business or Commercial Purpose
Paragraph 4(a) of the RDRP states that "In addition to the grounds set out in Paragraph 4(a) of the UDRP, you will also be required to submit to a mandatory administrative proceeding in the event that a complainant asserts to a Provider that your domain is not being or will not be used primarily for a bona fide business or commercial purpose. In the administrative proceeding, the complainant will bear the burden of proving that the above element is present. A complaint under the RDRP will not be considered valid based exclusively on the alleged non-use of your domain name"
Paragraph 3 of the Supplemental RDRP states that: "A complaint pursuant to the RDRP (whether on not also based on the UDRP) shall describe, in accordance with Paragraph 4 (a)-(c), the grounds on which the complaint is made including, in particular, the extent to which the domain name is not being or will not be used primarily for a bona fide business or commercial purpose."
The Complainant asserts (i) that the domain name was registered on November 8, 2001, and after 18 months is still inactive and therefore it is evident that the same is not being used primarily for a bona fide business or commercial purpose; and (ii) that the domain name is not intended to be used for a bona fide business or commercial purpose as the same was registered solely for the purpose of selling it for compensation.
Firstly, the RDRP states that a complaint under the RDRP will not be considered valid based exclusively on the alleged non-use of the domain name. Therefore, the Panel finds that the fact that the conflicting domain name is inactive is not enough evidence for constituting the element required in paragraph 4(a) of the RDRP.
Secondly, as explained above (paragraph 6. D. of this decision), there is no evidence for proving that Respondent registered the domain name with the purpose of selling it, specially given the small possibility that the Respondent was aware of the Complainant at the time of registration. Complainant contacted Respondent in November 2002, one year after Respondent registered , in order to know if Respondent would be interested in selling the domain name.
It is worth noting that paragraph 4(c)(i) of the RDRP states that selling, trading or leasing the domain name for compensation shall not constitute a bona fide business or commercial use if the Respondent registered the domain name for those purposes. In addition, paragraph 4(c)(ii) states that the unsolicited offering to sell, trade or lease the domain name for compensation shall not constitute a bona fide business or commercial use if the Respondent registered the domain name for those purposes.
Taking into account that there is no evidence of such conduct, the Panel finds that the Complainant has failed to prove that the Respondent registered the domain name for the purpose of selling it and therefore Complainant has failed to prove the element required in paragraph 4(a) of the RDRP.
7. Decision
The Panel finds that the Complainant proved the first element (paragraph 4 (a)(i) of the UDRP), however has failed to prove that the Respondent has no rights or legitimate interests in the conflicting domain name (paragraph 4(a)(ii) of the UDRP), that Respondent registered and used the domain name in bad faith (paragraph 4(a)(iii) of the UDRP) and that the domain name is not being or will not be used for a bona fide business or commercial purpose (paragraph 4(a) of the RDRP).
Therefore, pursuant to paragraph 15 of the Rules for UDRP, the Panel declines to order the transfer of the domain name to the Complainant.
Miguel B. O�Farrell
Sole Panelist
Dated: July 28, 2003
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