WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Council of Better Business Bureaus, Inc v. Domain Deluxe
Case No. D2005-0614
1. The Parties
The Complainant is Council of Better Business Bureaus, Inc., Arlington, Virginia, United States of America (the “Complainant”), represented by Victoria Jean Doran.
The Respondent is Domain Deluxe, Central Hong Kong, Hong Kong, SAR of China (the “Respondent”).
2. The Domain Names and Registrars
The domain names at issue are , , , , , , , , , , , , (the “Domain Names”), some of them registered with eNom, Inc. and some others with Nameview, Inc. (the “Registrar”, for individual references or “Registrars”, for collective references).
3. Procedural History
A Complaint dated June�13,�2005, was submitted by mail to the WIPO Arbitration and Mediation Center (the “Center”). The submission was made in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on August�26,�1999, (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October�24,�1999, (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On June�15,�2005, the Center acknowledged receipt of the Complaint by e-mail and received and stamped the hard copy on June 15,�2005.
On June�15,�2005, the Center notified the Registrars, as well as a third registrar named NameK, that Complainant filed a complaint against Respondent, and that the concerned domain names were the Domain Names. A request was made to Registrar to indicate receipt of the Complaint, to confirm that the Domain Names are registered with Registrar and that Respondent was the current registrant, among others. The Center requested confirmation from the Registrar that the Domain Names shall be kept locked during the pending administrative proceeding.
On June�16,�2005, Registrar eNom informed having registered Domain Names , , , , , and . Registrar confirmed that the Domain Names would remain locked for the duration of the proceeding and that the language of the agreement was English.
On June�17,�2005, NameKing responded informing that it was not the registrar for any of the Domain Names.
On June�30,�2005, Nameview acknowledged receipt of the e-mail by the Center, informed having registered Domain Names , , , , , , and , and indicated that its client was willing to transfer the Domain Names under its care without entering into a contest. The Complainant decided not to suspend the proceeding in order to discuss about the transfer of the Domain Names.
On August�1,�2005, the Center notified a Complaint Deficiency, requesting that Complainant submits itself to the jurisdiction of the courts at the location of the Domain Name holder’s address.
On August�3,�2005, Complainant submitted by e-mail an Amendment to Complaint, availing itself to the jurisdiction of the courts at the location of the Domain Names holder’s address. On August 8, 2005, the Center received the hard copy of the amended Complaint.
On August�9,�2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Center marked August�29,�2005, as the deadline for the submission of response to the Center and the Complainant.
On September�14,�2005, the Center sent a Notification of Respondent Default to the Parties by e-mail.
On September�14,�2005, the Center received from Complainant a communication requesting the inclusion of as an additional domain name to the Complaint.
On September�15,�2005, the Center responded explaining that the Rules do not explicitly provide for a Complaint to be amended, after the commencement of proceedings, to include additional domain names, but that the Panelist could consider the request in terms of paragraph 10 of the Rules.
After having received the undersigned’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Luis C. Schmidt as a Sole Panelist.
Sharing the assessment of the Center, the Panel independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of fees was made in time. The Panel finds that the Center has duly notified Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
By undertaking that there are no special circumstances to determine otherwise, as provided in paragraph 11 of the Rules, the language of this proceeding is English, the language of the registration agreement.
4. Factual Background
After Complainant’s assertions, supported by the documents attached to the Complaint, all of them undisputed by Respondent –as having defaulted to the Complaint– and after proper verification conducted at the database of the Mexican and the U.S. Trademark Office by the Panel itself, based on the discretional powers conferred upon this latter, in accordance with paragraph 10 (a) of the Rules, applicable to the present matter, and supported by precedents such as InfoS, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel finds that the Complainant owns the following service marks (referred hereinafter as the “Marks” or the “BBB marks”) registered in the Principal Register of the U.S. Trademark Office or with other national offices:
Mark
Country
Reg. No.
Date Issued
First Use
BETTER BUSINESS BUREAU
USA
566415
969847
971579
November 4, 1952.
October 2, 1973.
October 23, 1973.
January 10, 1927.
January 10, 1927.
January 10, 1927.
BETTER BUSINESS BUREAU
CANADA
143543
622110
September 15, 1995.
October 7, 2004.
BETTER BUSINESS BUREAU
MEXICO
502327
August 30, 1995.
BETTER BUSINESS BUREAU
JAPAN
4403752
July 28, 2000.
BETTER BUSINESS BUREAU
RUMANIA
57228
May 5, 2003.
BBB
USA
2,314,197
February 1, 2000.
January 10, 1927.
BBB
UK
2,113,413
October 19, 1996.
BBB
CANADA
909816
620664
March 5, 1997.
September 24, 2004.
BBB
EUROPEAN COMMUNITY
390823
May 13, 1998.
BBB
COSTA RICA
107572
May 18, 1998.
BBB
PERU
00031337
January 20, 2003.
BBB
RUMANIA
57287
May 6, 2003.
In addition to the registrations or the “Marks” that are referred to above, Complainant has sought or has allowed authorized parties to seek and obtain registrations for various domain names, including, among others: ; ; ; ; , and .
Complainant, Council of Better Business Bureaus, Inc. is a corporation doing business in the field of investigative and information services relative to business and trade practices for protecting responsible business against abusive practices and for protecting responsible business against abusive business practices and for establishing and maintaining legitimate advertising and merchandising practices. Services are rendered using marks BETTER BUSINESS BUREAUS or BBB and other variations, whether including designs or not.
It appears that Respondent obtained the registration of the Domain Names between 2001 and 2003, that is nearly fifty years after Complainant had obtained the first service mark application (although Complainant has claimed use of the Marks in the US since the year of 1927).
The Domain Names lead the users to a number of different sites all of them purporting consumer resource or business information.
On June 22, 2004, Complainant’s Counsel sent by electronic mail a cease and desist letter to the Respondent, demanding this latter to immediately cease all infringing activity and transfer the ownership of the Domain Name to Complainant. According to the evidence of Complainant, Respondent replied on June 23, 2005, stating that it would relinquish to that Domain Name. Since Respondent did not act as indicated Complainant sent reminders without having gotten a response.
From the evidence submitted by Complainant and the searches made at discretion of this Panel, Respondent has been involved in at least in two other domain name disputes, namely WIPO cases Nos. D2003-0314 and D2001-1427.
5. Parties’ contentions.
A. Complainant
- The Domain Names are all confusingly similar to Complainant’s trademarks BBB and Better Business Bureau (the “Marks”), because they are variants of the words “Better Business Bureau” or they wholly incorporate BBB for the same reasons.
- Complainant has asserted rights over the “Marks” by having used them continuously since 1916 and having registered them in a number of countries. Complainant considers the “Marks” to be famous and well known for promoting business and ethical relationships in the market place. Complainant or its authorized group of licensees has also registered domain names using either “Better Business Bureau” or “BBB”.
- Respondent has no rights or legitimate interest in the Domain Names. Registration is not a licensee of Complainant and does not operate a legitimate Better Business Bureau. Respondent itself virtually acknowledged it had no legitimate rights in one of the domains that it registered, . When following the Complainant’s contact with Respondent about this registration in June 2004, Respondent replied that it agreed the domain should be transferred to Complainant.
- Likewise, Respondent has no rights or legitimate interest since the Domain Names are so similar to the “Marks” making it reasonable to conclude that Respondent was well aware of Complainant’s famous marks at the time when the Domain Names were registered.
- Lastly, Complainant asserts that respondent does not have rights or legal interest in the Domain Names since these is no evidence that Respondent as an individual business, or other organization, has been commonly known by any of the Domain Names.
- Respondent has acted in bad faith given the number of Domain Names similar to BETTER BUSINESS BUREAU or BBB. The foregoing would make it appear that Respondent is intentionally attempting to divert consumers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant. Examples of the foregoing are the “” website, in which information on lemon laws is being offered, the “” website, providing business reports information similar to that of Complainant’s own website, and the “www.” site, in which Registrant purports to offer impartial real estate and personal finance assistance and information.
As a matter of fact, as Complainant has stated, some of the business information provided in the websites under some of the Domain Names is inaccurate as it reveals unsatisfactory records with the Better Business Bureau system.
- Respondent has acted in bad faith as on June 25, 2004, it agreed to acquiesce to Complainant’s demand for a cancellation of the domain name . However, Respondent refused to follow through despite further correspondence from Complainant. Likewise, Respondent could be intending to profit from the sale of the Domain Name by selling them, or it is using the sites to promote business that has an unsatisfactory record with the Better Business Bureau system and is getting paid by such businesses for registrant’s listing on them.
- Respondent has been involved in other domain name disputes, making it clear that it is devoted to registering domain names relative to famous marks for purposes such as selling them. Complainant considers that to be suggestive of a pattern by Registrant of misappropriating domain names containing famous marks of others, whether for sale or other nefarious purposes.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules allow for the submission of a Response by the Respondent. According to Rules, paragraph, 5(b)(i), “the response shall (…) respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (…)”
Under the Rules, and in particular paragraph 14(a), if a Respondent fails to submit a response, the Panel “shall proceed to a decision on the complaint”, and under paragraph 14(b), the Panel “shall draw such inferences there from as it considers appropriate”.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant must still support its assertion with evidence to prove the three elements found in paragraph 4(a) of the Policy.
As concluded in InfoS, Inc. v. Hari Prakash, WIPO case No. D2000-0076, the Panel considers that under Paragraph 10(a) of the Rules, the Panel has the power to independently search the Internet, in order to obtain as much information as required to render a decision.
The Panel visited the various websites that can be displayed under the Domain Names, in order to confirm that the evidence that Complainant had submitted was right and that the content of all said websites relates to business information.
The Complainant requested the Center to include in the proceeding one additional domain name . From a Whois database search that the Panel performed it was obtained that the Registrar is Nameview although domain name is in redemption period. Deciding on the transferability of the additional domain name would possibly break the due process principles that govern UDRP proceedings, in conformity with the Policy and Rules as the Respondent was not given notice of the Complainant’s request to add the extra domain name. In addition to that, it appears that other domain names incorporating“” have also been registered, which may eventually merit the filing of new complaints. Accordingly, the Panel decides not to include the domain name amongst the Domain Names subject to the instant proceeding.
A. Identical or Confusingly Similar
From assessing the evidence that the Complainant has submitted, the Panel has determined that the Domain Names indeed resemble the Marks. In some cases, the Marks were incorporated exactly into the Domain Names and in some others, the marks have been misspelled, in particular the word Bureau, and have produced different variants. BETTER BUSINESS BUREAU and BBB are marks strong enough to deserve protection, due to their inherent capability to distinguish ethics in business services. The number of registrations that Complainant has been able to obtain worldwide supports the foregoing. The copying or imitation of such marks leads to the presumption of confusion. UDRP panelists have analyzed similar cases finding confusion, as happened in VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; or Banca Popolare Friuladria S.p.A. v. Giovanni Zago, WIPO Case No. D2000-0793; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, influenced by Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205; or InfoS, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069.
The Panel finds that the Domain Names are confusingly similar to the BETTER BUSINESS BUREAU and BBB marks and in addition, the Panel considers that the Domain Names are nearly identical to the domain names that Complainant has obtained for itself or its licensees. Accordingly, the Panel finds that the Complainant has met the burden of confusing similarity as required by the Policy.
B. Rights or Legitimate Interests
The Panel has considered the allegation of the Complainant as to the lack of rights or legitimate interest of the Respondent in respect of the Domain Names. In particular, the Panel has noted the argument that the Respondent lacks of any trademark or other rights in the Domain Names.
In the present proceeding there is no contention on record, made by the Respondent, the Panel could rely, to conclude that it might have trademark or other rights or, legitimate interests in the Domain Names. Nothing has been evidenced that reasonably leads to inference that the Respondent has such rights or legitimate interests., pursuant to the Policy, paragraph 4 (c). Complainant has argued that there is no legitimate interest considering that far from having rights over the Domain Names, Respondent has registered them without being an authorized licensee and therefore does not operate a legitimate Better Business Bureau. Likewise, the proximity between Domain Names and Marks, in terms of likeness and the type of content –business information- of the websites connected to the Domain Names, would lead to the reasonable conclusion that Respondent knew about the Marks. The Panel subscribes to the foregoing view.
The Panel finds it detrimental that ther is a lack of evidence on record indicating that the Domain Names are in use or that there have been preparations for use, in connection with a good faith business or any activity in general. On the contrary, Complainant’s evidence shows that the Domain Names at issue point out at websites displaying business content, making it appear that the users have reached sites that Complainant could itself operate or at least approve. Accordingly, the evidence on record demonstrates that Respondent has only registered and used the Domain Names for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the BETTER BUSINESS BUREAU and BBB marks, as to the source, sponsorship, affiliation or endorsement of the products and services advertised on Respondent’s website.
In addition, this Panel gives weight to the fact that Respondent defaulted. It can be inferred that by defaulting Respondent showed nothing but lack of interest in the Domain Names. And in the absence of a response, legitimate interest in the Domain Name by Respondent is simply not possible to be determined. The Panel understands the difficulty in proving negative facts. For that reason, the Complainant needs to show a prima facie case. Once a prima facie case is established, the owner shifts to the Respondent to rebut the presumption that it has no rights or legitimate interests. No response was filed in this case.
The Panel finds that the Respondent has no rights to or legitimate interests in the Domain Names at issue.
6.3 Registrations and Use in Bad Faith
Complainant has strongly emphasized that the similarities amongst Domain Names and Marks, and the business related content of the websites under the Domain Names, make it appear that Respondent is intentionally attempting to divert consumers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant. This Panel agrees with the foregoing argument.
Paragraph 4(a)(iii) of the Policy requires that, in order for a registered domain name to be transferred to a complainant, it would have to be “registered” and “used” in bad faith. Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall be conclusive that the domain name has been registered and used in bad faith. Paragraph 4(b)(iv) of the Policy states as an indication of bad faith a situation where a domain name is registered for the purpose of attracting consumers for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
In the view of this Panel, Respondent registered the Domain Names for the purpose of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the services advertised in Respondent’s website. The foregoing can be concluded in virtue of the similarities between the Domain Names and Marks and the websites and their content that can be accessed when using the Domain Names. Internet users could possibly fall into confusion when searching for Complainant and become attracted to the websites of Respondent. The likelihood that Respondent is seeking gain from the registration and use of the Domain Names is also quite likely.
Similarly, the Panel finds that Respondent was aware of the BETTER BUSINESS BUREAU and BBB marks pertaining to Complainant. It would be unlikely that Respondent registered the Domain Names without knowledge of the Marks when having adopted in its domain names variations of the Marks as well as of certain domain names owned by authorized licensees of Complainant. That is a sign of bad faith as well.
The Panel finds that the Domain Names were registered and used in bad faith as per paragraph 4(b)(iii) of the Policy.
7. Decision
The panel finds that the Domain Names , , , , , , , , , , , , are identical or confusingly similar to the service marks of the Complainant, and that the Respondent has no rights to or legitimate interests in said Domain Names. The Panel has further found that the Domain Names have been registered in bad faith, and that they have been used in bad faith.
Therefore, pursuant to Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , , , , , , , , be transferred to the Complainant.
Luis C. Schmidt
Sole Panelist
Date: October 7, 2005
Full & Egal Universal Law Academy