WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BuyB LLC v. Accudomains
Case No. D2007-1599
1. The Parties
The Complainant is BuyB LLC, Worcester, Massachusetts, United States of America, represented by Debevoise & Plimpton LLP, United States of America.
The Respondent is Accudomains, Fort Worth, Texas, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2007. On October 31, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response indicating that the Respondent is the registrant of the Domain Name and providing contact details. 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 November 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 18, 2007. 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.
4. Factual Background
The Complainant is a Delaware limited liability company based in Massachusetts, United States of America. The Complainant states that in 1999 it began selling corrugated cardboard boxes and related packaging materials under the BUYBOXES.COM mark, and that it has advertised and promoted the mark in several different media.
The Complainant obtained United States Trademark Registration No. 2766032 on September 23, 2003, for the mark BUYBOXES.COM, showing first use in commerce on May 15, 1999. The Complainant also holds United States Trademark Registration No. 2733521 for BUYBOXES.COM as a service mark listed on the Supplemental Register, similarly showing May 15, 1999 as the date of first use in commerce.
The Complainant reports that it registered the Domain Name in November 1998, and began offering its products for sale shortly thereafter on a website associated with the Domain Name. The Complainant furnished printouts of archived pages from its website from 2000, 2001, and 2003 as found in the Internet Archive Wayback Machine . These show that the Complainant used the Domain Name to advertise and sell its products online during those years.
In December 2005, according to the Complaint, the Complainant “inadvertently failed to renew the Domain Name.” The Complainant does not indicate at what website, if any, it has since conducted business.
An individual named Jim Black then registered the Domain Name on February 14, 2006, listing a postal address in Aledo, Texas, United States of America in the Registrar’s WHOIS database, as shown in a printout from that database dated March 12, 2007. The Registrar’s WHOIS database in March 2007 showed that the Domain Name was “registered through” AccuD.
At some time before the Registrar responded to the Center’s Request for Registrar Verification in this proceeding, the name of the registrant was changed to “Accudomains,” at a postal address in Fort Worth, Texas. The WHOIS database lists Jim Black (at the same address) as the administrative and technical contact.
An examination of the website at “www.accud” shows that “AccuD” facilitates domain name registration and resale (it does not itself appear to be an ICANN-certified registrar). The website also offers a range of web hosting services, SSL certificates, and other products supporting ecommerce and Internet marketing. The website does not indicate whether AccuD is a legal entity or a trade name. Legal agreements on the website name AccuD “a/an individual”, which does not appear consistent with a legal entity. The Panel notes that an article dated July 26, 2006 and published online by the Web Hosting Industry Review includes an interview with “Jim Black, founder of AccuD” (see /marketwatch/072606_AccuDomains_Offers_SSL_Certificates.cfm). However, the online business search database operated by the Texas Comptroller of Public Accounts does not list “Accudomains” or “AccuD” as registered business entities in Texas.
Based on the available information, the Panel concludes that “Accudomains” is most likely a trade name or alter ego for Jim Black.
The Domain Name does not currently resolve to a website. The Internet Archive Wayback Machine includes web pages associated with the Domain Name in 2006, after it was registered by Jim Black. Those that are available for viewing online show that the Domain Name formerly resolved to an advertising portal featuring links to third parties offering cardboard boxes, packing materials, and moving and storage supplies, as well as links to advertisements and information apparently unrelated to these products.
Counsel for the Complainant sent a cease-and-desist letter addressed to Jim Black on February 7, 2007, using the contact information listed in the WHOIS database. There was no reply.
5. Parties’ Contentions
A. Complainant
The Complainant observes that the Domain Name, which it previously owned, is identical to its registered trademark. The Complainant argues that the Respondent has no legitimate interest in the Domain Name.
The Complainant concludes that the Respondent registered and used the Domain Name in bad faith to mislead Internet users for commercial gain. The Complainant notes that the Respondent registered the Domain Name shortly after the Complainant allowed its registration to lapse, and that the Domain Name resolved for some time to an advertising portal that included links to competing providers of boxes and related materials. The Complainant presumes that these links generated pay-per-click advertising revenues for the Respondent.
The timing of the Domain Name registration and the display of links relevant to the cardboard box industry suggest to the Complainant that the Respondent had actual as well as constructive knowledge of the Complainant’s registered trademark. The Complainant cites the “passive use” doctrine with respect to periods in which the Domain Name has not resolved to a website. The Complainant also contends that the Respondent’s inaccurate contact details and failure to reply to the cease-and-desist letter and the Complaint in this proceeding support an inference of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds registered trademarks for the BUYBOXES.COM mark, which is identical to the Domain Name. Therefore, this element of the Complaint is established.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Respondent has not come forward with an explanation for the choice of the Domain Name. There is no indication that the Respondent is known by a corresponding name or holds relevant trademark or other rights. For at least several months in 2006, the Domain Name was associated with an advertising portal. It is not known whether the Respondent derived revenue from this use, but it is clearly not a noncommercial or fair use of the Domain Name.
“Buy” and “boxes” are dictionary English words, and in at least some circumstances it would be legitimate to use them in their generic sense for a website advertising boxes and related materials, as the Respondent did for a time. This would not represent a “bona fide” offering of goods or services, however, if the evidence establishes that the Respondent most likely registered and used the Domain Name in a bad-faith effort to mislead Internet users and trade on the reputation of the Complainant’s mark. That issue is better addressed below, in analyzing the necessary bad-faith element of the Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Both the Complainant and the Respondent are located in the United States of America, where the Complainant obtained trademark registrations, but they are not in the same region of the country. The Complainant has not offered evidence that its mark was advertised in Texas, apart from the fact that it maintained a website at least through 2003. The Complainant does not claim that its mark is famous or highly distinctive, and it provides no information concerning the level of sales or advertising associated with the mark.
Indeed, it is not clear from this record that the Complainant has even used the mark in commerce since 2003. The Panel notes that the Internet Archive does not list any archived pages associated with the Domain Name in 2004 or 2005, and the Complainant has not stated that it was, in fact, doing business online in those years or otherwise using the trademark BUYBOXES.COM continuously since 1999. It is indeed surprising that a company with “.com” in its legal name (a) does not assert or demonstrate that it maintained a website using that name at any time after 2003, (b) allowed the corresponding domain name registration to lapse in 2005, and (c) does not point to a current presence on the Internet.
While the foregoing does not suggest a high probability of actual knowledge, WIPO panels have in certain circumstances been prepared to find constructive knowledge on the part of a registrant, particularly where both parties share the same jurisdiction, or where the registrant is in the domain name business including, for example, the registration of recently expired domain names. Even if such constructive notice were found to be present here, the Panel does not believe it would be sufficient to support an inference of bad faith on the record of this case. The record does not sufficiently support a conclusion that the Respondent “intentionally attempted” to engender confusion with the Complainant’s mark. This is particularly so considering the basically generic nature of the Domain Name, comprising two common English words, and the less-than-clear record of the Complainant’s own use of the Domain Name before its expiry.
These facts suggest that it is, on the whole, unlikely that the Respondent specifically targeted the Complainant’s mark by registering the Domain Name in 2006, some two months after the Domain Name became available due to the Complainant’s non-renewal. Rather, it is at least as likely that the Respondent, a dealer in quantities of domain names, registered the Domain Name for its potential generic value.
The Complainant assumes that Mr. Black is the same Jim Black of Fort Worth, Texas who was found to have registered and used two domain names in bad faith in an earlier UDRP proceeding, Speedway SuperAmerica LLC v. Jim Black,WIPO Case No. D2002-0475. This identification is not certain, however, as the postal address and other contact details differ, and the Panel does not find the possibility material to the decision in the current proceeding. There is not sufficient evidence to find a pattern of serial cybersquatting by this Respondent that would serve to bolster an inference of bad faith in the present case.
The Panel agrees that the Respondent has evinced a lamentable disregard for maintaining the accuracy of the registered contact details and responding to serious intellectual property claims. The Complainant reports that its courier package containing the cease-and-desist letter was returned as unclaimed, and the telephone contact number was not a working number. Messages to one of the two email addresses listed in the WHOIS database produced a “bounceback” error message. The other, an address in the domain, was apparently a valid email address, but there have been no responses to emails from the Complainant and the Center.
Such careless conduct invites adverse inferences of bad faith. But in this case, the Panel does not find in the record sufficient evidence that the Respondent was more probably than not aware of the Complainant’s mark as well as bent on exploiting it. Thus, the Panel concludes that the third element of the Complaint has not been established.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: January 3, 2008
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