WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mario Rodriguez BBS Technologies, lnc. v. Guangzhou Tianji Technology Co. Ltd Pengfei Zhang Case No. D2009-0477 1. The Parties
The Complainant is Mario Rodriguez BBS Technologies, lnc. of Texas, United States of America, represented internally.
The Respondent is Guangzhou Tianji Technology Co. Ltd., Pengfei Zhang of Guangzhou, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2009. On April 15, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 15, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 21, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2009. The Response was filed with the Center on May 20, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 28, 2009. 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 owns a United States (“U.S.”) trademark registration for the mark CONTINUOUS DATA PROTECTION on the Supplemental Register, under Registration No. 3,332,964 dated November 6, 2007. The Complainant claims to own three domain names containing the words “continuousdataprotection”, namely: , , and . (The Panel notes these domains are registered in the name of BBS Technologies, Inc with the Complainant listed as the technical and administrative contacts).
The domain name wa registered on April 7, 2009.
The Complainant received an email from an individual named “Tom Baron” on April 9, 2009, offering the domain name for $15,000 USD. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark CONTINUOUS DATA PROTECTION, which is registered under U.S. trademark Registration No. 3,332,964 dated November 6, 2007.
The Complainant contends that the disputed domain name is essentially identical to the registered CONTINUOUS DATA PROTECTION mark, which is owned by the Complainant. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's registered trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent does not own a trademark or domain name that is similar to the disputed domain name, and accordingly, cannot establish rights or legitimate interests in the domain name. (c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the email of April 9, 2009 from Tom Baron offering the disputed domain name for 15,000USD, which is much more than the cost of registering the domain name. Accordingly, the Complainant contends that this email is evidence of bad faith of the Respondent. B. Respondent
The Respondent submits that the term “continuous data protection” is a generic term referring to the “backup of computer data”. The Respondent further submits that the Complainant's trademark registration is registered on the Supplemental Register in the U.S. and as such the mark does not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use. The Respondent claims that he registered the domain name for its generic meaning and that he was not aware of the Complainant's business or trademark at the time the domain name was created. The Respondent further submits that he did not send the email of April 9, 2009, that an individual by the name of Tom Baron in fact was the author of the email. The Respondent claims that he actually became the Registrant on April 10, 2009 the day after the e-mail was sent and received by the Complainant. The Respondent submits that he has never offered the domain name for sale, and because the Complaint was filed 4 days after he acquired the domain name, he has not yet had an opportunity to set up or use the disputed domain name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In this matter, the Complainant has based its complaint on the existence of a single trademark registration, which is found on the Supplemental Register in the USPTO registered in the name of Righteous Software Inc., with an assignment recorded to the benefit of Square 1 Bank. The Panel finds that U.S. No. 3,332,964 (registered on the U.S. Supplemental Register) is not sufficient, in the absence of other probative evidence, to establish rights in the trademark for purposes of this proceeding. The Panel notes here the registration record states by way of disclaimer that “no claim is made to the exclusive right to use data protection a part from the mark as shown in this case, the evidence does not show that the trademark CONTINUOUS DATA PROTECTION is anything more than a descriptive term used to describe “back-up of computer data”. The Respondent's evidence of third party use of the term “continuous data protection” shows that the terms are commonly used in the trade by a variety of sources, in their descriptive sense. In the face of this evidence, and the complete absence of proof of reputation, extensive use, acquired distinctiveness, or secondary meaning by the Complainant, the Panel finds that the trademark registration here on the Supplemental Register is not sufficient to support a finding of trademark rights owned by the Complainant.
Therefore, the Panel finds that the Complainant has not satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In view of the finding with respect to established rights in the trademark CONTINUOUS DATA PROTECTION, the Panel need not make a finding with respect to rights or legitimate interests. The Panel notes for the sake of completeness that the Complainants argument, set out in full: “Current registrant does not have any trademark similar or related to the domain name listed herein” would not in any event carry the Complainant's burden under paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In view of the finding with respect to established rights in the trademark CONTINUOUS DATA PROTECTION, the Panel need not make a finding with respect to registration and use in bad faith. Again for the sake of completeness, it is not clear to the Panel that an offer to sell the disputed domain name to the Complainant by a party allegedly unaffiliated with the Respondent would satisfy the Complainant's burden under paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: June 11, 2009
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