WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Superiority, Inc. d/b/a Just Bulbs v. none/M
Case No. D2003-0491
1. The Parties
The Complainant is Superiority, Inc. d/b/a Just Bulbs, of New York, United States of America, represented by Robert S. Stoll, Stoll, Miskin, Hoffman & Badie, New York, United States of America.
The Respondent is none/M, of Texas, United States of America, represented by John B. Berryhill, Philadelphia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with NameS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 24, 2003, the Center transmitted by email to NameS a request for registrar verification in connection with the domain name at issue. On July 1, 2003, NameS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2003. The Response was filed with the Center on July 23, 2003.
The Center appointed Neil A. Smith as the sole panelist in this matter on July 31, 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, paragraph 7.
Although the Panel did not request further materials, Complainant filed a Reply on August 1, 2003. The Panel has sole discretion as to whether to add the Reply brief to the record and consider its contents. Most Panels only allow supplemental materials under exceptional circumstances such as the existence of "new facts that either were not available at the time of the Complaint or were not included because Complainant had no basis for believing they would be relevant to the proceeding." See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Nonetheless the Panel has considered and commented upon the Reply. However, the Reply does not alter the outcome of this administrative proceeding. Respondent later filed a Sur-Reply to Complainant�s Reply which was not considered by the Panel.
4. Factual Background
The parties state that:
Complainant operates a retail store selling light bulbs and is the owner of a U.S. Trademark Registration for the mark JUSTBULBS. (Reg. No. 1,234,998). This mark was registered first in 1983, apparently has been used by the Complainant on its web page and in a Manhattan yellow pages ad. For an unknown length of time prior to May 6, 2003, Complainant operated a website at "" selling light bulbs. When Complainant�s web service went out of business, Complainant lost control of the domain name. The domain name was subsequently held by a third party. This party would not transfer the domain name to Complainant, and suggested that Complainant allow the registration to expire and then reregister it. At all times during their dispute with the third party, Complainant could have renewed the domain name registration, however the third party would have retained control over it. On or about May 6, 2003, the registration expired and the domain name became publicly available.
Prior to May 6, 2003, Respondent became interested in owning . Respondent does not own any trademarks that are similar to JUSTBULBS. Respondent did not investigate whether the domain name might be similar to any registered trademarks. Respondent signed up with SnapNames, a company that registers domain names as soon as they expire. On or about May 6, 2003, Complainant tried to reregister manually, but SnapNames had already registered the domain name in Respondent�s name. Due to the manner in which SnapNames enters registration data, Respondent�s name did not appear on the registration. However its address and contact information did.
Prior to receiving notice of this dispute, Respondent connected the domain name to a pay-per-performance database which displayed ads on that related to "bulbs." The site thus contained ads for both "light bulbs" and "flower bulbs," in addition to other products like gardening advice and lamps. Respondent earns money when visitors click on one of these ads. Sometime after receiving notice of this dispute, Respondent altered its site to display only ads relating to "flower bulbs."
5. Parties� Contentions
A. Complainant
Complainant claims that Respondent�s domain name is identical to its trademark, that Respondent has no legitimate interest in the domain name, and that Respondent registered and is using the domain name in bad faith.
To support the contention that Respondent has no legitimate interest in the domain name, Complainant asserts that Respondent has no trademark rights in a mark similar to JUSTBULBS.
To support the contention that Respondent registered the domain name in bad faith, Complainant asserts that Respondent had constructive knowledge of Complainant�s mark because it is registered, has been used in print advertising and appeared on when Complainant controlled that domain name. This constructive knowledge, combined with Respondent�s lack of a legitimate interest allegedly suggests bad faith. Additionally, Complainant claims that the following facts suggest Respondent�s bad faith: During settlement negotiations Respondent made a demand that Complainant pay over any fees refunded to Complainant by WIPO as a result of settlement (potentially up to $800); Respondent�s contact information listed in its domain name registry was incomplete; and Respondent has not transferred the domain name to Complainant.
To support the contention that Respondent is using the domain name in bad faith, Complainant asserts that Respondent failed to give any assurance that it would refrain from advertising light bulbs in the future. Complainant further contends that advertising light bulbs on would be an infringement of the JUSTBULBS service mark.
Complainant notes that it has used the JUSTBULBS service mark for many years, and lost control of through no fault of their own. Further, Respondent will benefit from Complainant�s mark because persons familiar with Complainant will visit , thus increasing the traffic on Respondent�s site. Respondent has only a marginal interest in the domain name. Thus Complainant claims the equities favor a transfer of the domain name to the Complainant.
B. Respondent
Respondent claims that it has a legitimate interest in the domain name, and that it registered and is using the domain name in good faith.
To support the contention that it has legitimate interest in the domain name, Respondent asserts that the domain name is merely descriptive. Respondent has a legitimate interest in using the domain name in its descriptive sense. By associating the domain name with a pay-per-performance advertising database, Respondent is relying on the descriptive rather than trademark meaning of the phrase "just bulbs." Further, when the domain name became publicly available Respondent was entitled to conclude that Complainant had abandoned the domain name. Because Complainant could have renewed the domain name registration at any time, Respondent is entitled to rely on Complainant�s inaction and the availability of the domain name.
Respondent removed advertisements for light bulbs in a show of good faith, and "takes no position on whether �just bulbs� is truly distinctive of a retailer of light bulbs." However, when Respondent registered the domain name it did not believe that such a descriptive phrase could be distinctive.
Respondent�s registration and productive use of the domain name do not resemble cybersquatting, therefore the domain name should not be transferred to the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements in order to prevail on a claim for the transfer of a domain name:
(i) [Respondent�s] domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) [Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [Respondent�s] domain name has been registered and is being used in bad faith.
The burden of proof is on the Complainant to show all three elements. Although the Policy does not mandate any specific standard of proof, the Panel agrees with the reasoning in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M," WIPO Case No. D2000-0847 (October 12, 2000), and will evaluate each of the claims based on a preponderance of the evidence.
A. Identical or Confusingly Similar
The domain name at issue, , is identical to the service mark of the Complainant, JUST BULBS. Thus Complainant has carried its burden with regard to paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant has failed to show that Respondent lacks a legitimate interest in the domain name . Complainant�s proffered evidence is that Respondent has no trademark or service mark for JUSTBULBS, and is not a licensee of anyone with such a mark. However, owning a trademark or license to a trademark is not required for Respondent to have a "legitimate" interest in the domain name. Where the disputed domain name is descriptive rather than arbitrary, Complainant needs to offer more evidence than mere lack of a registered trademark in order to meet their burden. Powerstation LLC v. Cristoph De Vos, WIPO Case No. D2001-1017 (October 10, 2001) (finding that lack of a registered trademark in POWERSTATION is insufficient to shift burden of proof to Respondent). But see Village Resorts Ltd v. Steven Lieberman, WIPO Case No. D2001-0814 (August 29, 2001) (finding that lack of trademark in SUPERFARES is sufficient to shift the burden of proof to Respondent).
Even if Respondent bore the burden of proof, there is sufficient evidence to show that Respondent has a legitimate interest in . In paragraph 4(c), the Policy defines three non-exclusive touchstones for determining whether a party has a legitimate interest in a domain name:
(i) before any notice to [Respondent] of the dispute, [Respondent�s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(Policy, paragraph 4(c)).
Respondent does not make any claims that would bring them under paragraphs 4(c)(ii) or 4(c)(iii). Respondent does not claim that it has ever been known as Just Bulbs or any similar phrase under paragraph 4(c)(ii), nor does it claim that the use of JUSTBULBS falls under the fair use doctrine referred to in paragraph 4(c)(iii).
The Respondent makes several claims relating to paragraph 4(c)(i). Before notice, Respondent was advertising light bulbs on its site. This was a bona fide offering of goods as Respondent was essentially using JUSTBULBS in its descriptive sense. While the Panel agrees with the logic of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M," WIPO Case No. D2000-0847 (October 12, 2000):
"[A] use which intentionally trades on the fame of another can not constitute a "bone fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy,"
Here, there is no evidence of intentional infringement. It is not established that the Respondent knew of the Complainant�s trademark at the time it registered the disputed domain name and there is no evidence that the Respondent registered the disputed domain name with the intention to profit from the Complainant trademark. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016. While Complainant may coincidentally have a registration for the words "just bulbs," the words also have a generic or descriptive meaning which Respondent was using or taking advantage of in selling bulbs of various types. While Apple may have a trademark for Apple for computers, it has no rights to stop others from using "apple" or to sell apples.
Respondent evinced good faith by removing light bulb advertisements from its site subsequent to being notified of the dispute. Further the phrase is a relatively short (only two words) and simple (comprised of common English words) descriptive phrase that could be used equally well to indicate flower bulbs or light bulbs.
Thus, Respondent has a legitimate interest in using the domain name for flower bulbs. Other panelists have reached similar results. See e.g., Drew Bernstein and Kill city d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706 (September 28, 2000) (denying the trademark holder�s complaint because "the term �lip service� � is not an arbitrary or coined term nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation �and one of those connotations is, as Respondent argues, �apt� for the adult entertainment advertising engaged in by the Respondent"); G, Inc. v. Walter Long d/b/a D d/b/a , WIPO Case No. D2001-0902 (October 22, 2001) (denying trademark applicant�s complaint "because the disputed domain name is susceptible of a meaning that is arguably apt for the services offered"). Since Respondent has represented that it will focus its website under the domain name on flower bulbs and not light bulbs, the Panel need not decide if the result would be different if it had not agreed to do so.
This is not a case where Respondent is deliberately benefiting from the use of the trademark meaning of JUSTBULBS by funneling traffic to its site. cf. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M," WIPO Case No. D2000-0847 (October 12, 2000) (finding that the use of a trademark for increasing web traffic was not a bona fide offering of goods or services).
Since Respondent has represented it will not resume advertising light bulbs, Respondent�s use of the domain name as a portal for customers interested in flower bulbs is sufficient to demonstrate a legitimate interest and a bona fide use of the domain name.
C. Registered and Used in Bad Faith
In order to prevail on this element, Complainant must show that the domain name was registered in bad faith or used in bad faith. Complainant has failed to prove either.
The policy outlines four touchstones for bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling . . . the domain name registration to the Complainant �; or
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent�s] website � by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of � a product or service on [Respondent�s] website.
(Policy, paragraph 4(b)).
Here, Complainant has not shown that Respondent registered "primarily for the purpose of selling" it back as required under paragraph 4(b)(i). In their reply brief, Complainant says that the Respondent demanded monies in excess of their out-of-pocket expenses during settlement negotiations. (Reply, paragraph 5). Specifically, the Respondent is said to have demanded that Complainant divulge some of its savings resulting from an early settlement, in the return of the administrative fee. This appears to be a creative request, which shows that there was not only a pending legal dispute, but it was initiated in the UDRP forum, where issue was joined between the parties. However, this is not probative of Respondent�s intent upon registering the domain name. Respondent�s demand forms part of a confidential offer to settle the dispute. Respondent only demanded a small amount of returned money, and determined that amount by using a pseudo-disgorgement theory. These facts weaken any inference that Respondent�s initial motive was to resell the domain name. Further, there is no direct indication that Respondent sought to otherwise resell the domain name.
Complainant has provided no evidence that Respondent intended to interfere with Complainant�s business as required by paragraphs 4(b)(ii) and 4(b)(iii).
Complainant has not carried its burden under paragraph 4(b)(iv) to show that Respondent "intentionally attempted to attract . . . users . . . by creating a likelihood of confusion with the Complainant�s mark". There is no evidence that shows that the Respondent knew of the Complainant�s trademark at the time it registered the disputed domain name. Thus under the facts before the Panel, Respondent did not "intentionally" attract such users.
Complainant offers several other arguments and pieces of evidence to show bad faith registration or use. None is compelling. First, Complainant says Respondent did not include a name in its registration information. (Complaint, paragraph 12.2.D.). Second, Respondent did not check to see whether JUSTBULBS was a registered trademark. (Complaint, paragraph 12.2.B.). Third, Respondent has not transferred the domain name. (Complaint, paragraph 12.2.F.). Fourth, Complainant says that Respondent had constructive knowledge of Complainant�s service mark because of its advertising in New York and its former use of . (Complaint, paragraph 12.2.C.). Fifth, Complainant says that Respondent�s request for payment of the refund that could be received from WIPO if this dispute were settled is evidence of cybersquatting.
The first three claims lack substance. First, the "short answer" is that Respondent included enough contact information to allow the Complainant to initiate this administrative proceeding. Second, the fact that Respondent did not perform a trademark search suggests, if anything, that Respondent did not know of Complainant�s mark, and thus did not act in bad faith, or in a greater sense, that such might be an obligation, perhaps in one or all countries of the world, and that this would be an unreasonable burden. Third, Respondent�s refusal to transfer the domain name is consistent with a good faith disagreement over the probability of Complainant�s success in front of this Panel, which is born out here.
The fourth claim, that Respondent must have known of Complainant�s advertising and prior use, is also insufficient to show bad faith. It is unlikely that anyone from M, a company operating in Texas, would read the yellow pages for Manhattan. And this too would be an unreasonable burden. The domain name may be characterized as generic or descriptive. As long as Respondent has such a legitimate use for the domain name as here, the Panel will not infer bad faith.
Complainant has argued that Respondent is a cybersquatter as a result of the interchange between the parties after the request for administrative proceeding under the UDRP, in which Respondent�s lawyer suggested that the dispute which had been filed be resolved by the transfer of the domain name to Complainant, and that Complainant then send any refund of the fee paid WIPO for the dispute resolution administrative proceeding to Respondent, the domain name owner. Apparently the expected amount was up to eight hundred U.S. dollars ($800) and Complainant notes that this is more than Respondent�s out-of-pocket costs for registering the Internet domain name , and argues here that this is evidence that Respondent is a cybersquatter under para. 4(b)(i) of the UDRP policy. The Panel is thus faced with the issue of whether this should be evidence of cybersquatting under the UDRP. Indeed the Panel is given the obligation to "determine the admissibility of evidence" Para. 10(b) of UDRP policy.
Other Panels have raised the issue in the context of the UDRP as to whether settlement offers made to resolve legal disputes, at various stages of such conflict, ought to be used as evidence of cybersquatting in these proceedings. Panels have noted the advantages of private settlements between the parties, avoiding the clogging of court systems and arbitration and other dispute resolution organizations, and that the law should encourage settlement of disputes, rather than litigation or arbitration. The Panel agrees with this proposition, and recognizes that the law of several jurisdictions, such as the United States and England, among others, have rules such as United States Federal Rule of Evidence 408, which prohibits the use of offers made in the context of the settlement of legal disputes as evidence of liability in the legal disputes. Parties may legitimately agree to resolve a dispute based upon the practical realities of the costs of litigation, without their offers intended to be any admissions in settlement, particularly one of liability, but merely reflecting the practical realities of the hassle of being in a dispute and particularly the cost of litigation or dispute resolution procedures to the parties. Were this a court dispute, it would be expected that an offer of compromise to settle a dispute, through the payment of money and the transfer of property, would be sacrosanct, and not provided as evidence of liability or wrongdoing to the trier of fact. Should the UDRP be different?
In the case of cybersquatting, which is often defined as registering an Internet domain name similar to another�s trademark for the purpose of selling the domain name to the trademark owner for a handsome profit(UDRP para. 4(b)(i)), rules rely upon evidence of offers to sell the domain name to the trademark owner for more than the out-of-pocket costs, as one of the indicia of cybersquatting. Most Panels of the UDRP have found that, in general, offers to resolve such disputes ought to be considered as some evidence of cybersquatting, in view of the specific reference to offers to sell the domain name to the trademark owner in the defining policy for resolution of UDRP disputes. See E.g. Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Other Panels have suggested that policies which govern encouraging out of court and out of dispute resolution organization resolution of disputes, such as United States Federal Rule of Evidence 408 and English common law (See, The Vanguard Group, Inc. v. Emillio Sa, WIPO Case No. D2001-1453) are better served by not allowing reliance upon offers to settle such disputes. See also The Vanguard Group, Inc. v. Emillio Sa, WIPO Case No. D2001-1453; Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; LifePlan v. Life Plan, Case No. FA0005000094826 NAF; CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243; Netvault Ltd v. SV Computers, WIPO Case No. D2000-0095.
The Panel here need not make this decision on a broad basis, but under the facts here, as admitted by the parties, the Panel does not believe that the creative suggestion by Respondent�s counsel that Complainant give to Respondent the few hundred dollars that might be saved by resolving the administrative proceeding without submitting it to this Panel for final resolution should be considered evidence of cybersquatting here. While a blanket rule against the use of offers to settle domain name disputes as evidence of cybersquatting would be inappropriate, here the rule and policy encouraging private settlements between parties appears to be appropriate in its application. The suggestion arose during discussions between the parties and/or their counsel of resolving and avoiding the dispute, and, most notably the suggestion of payment was clearly after the legal dispute between the parties not only arose, but issue was clearly joined in this forum since the request for administrative proceeding under the UDRP had already been made, thus the reference was made by Respondent to a transfer of the monies which might be refunded for the resolution of the dispute.
The Panel does not believe that such a suggestion, made after the filing of the request for administrative proceeding under the UDRP, for an albeit relatively small amount as cybersquatting goes, should be evidence of cybersquatting that should "come back to haunt" a party trying to resolve a clearly existing legal dispute. Accordingly the Panel rejects the argument that this suggestion of a transfer of funds from Complainant to Respondent, together with the transfer of the Internet domain name at issue from Respondent to Complainant should be evidence of cybersquatting here.
Because Complainant has not shown that any of the touchstones for bad faith are present in this case, and because the further evidence offered is insufficient to show bad faith registration or use, the Panel concludes that Respondent registered and is using the domain name in good faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Neil A. Smith
Sole Panelist
Dated: October 9, 2003
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