Complainant is Business Filings Incorporated of Wisconsin, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.
Respondent is John Thalacker d/b/a Traffico of Texas, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2010. On August 6, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On August 9, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced August 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2010.
The Response was filed with the Center September 2, 2010.
The Center appointed John R. Keys, Jr., Michelle Brownlee and Alan L. Limbury as panelists in this matter on September 17, 2010. The Panel finds that it was properly constituted. Each member of 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.
On September 17, 2010, Complainant submitted an unsolicited Reply Brief, which the Center transmitted to the Panel on September 20, 2010 and which the Panel accepted and considered. On October 1, 2010, the due date for the Panel’s decision, Respondent submitted an unsolicited sur-reply, which the Panel did not accept or consider. 4. Factual Background
On August 7, 1996, Complainant registered the domain name .
Beginning sometime in 1996 and continuing to the present, Complainant has maintained a website at “www.” offering online business forms and related products and services.
On August 9, 2000, Complainant filed an application with the United States Patent and Trademark Office (USPTO) to register BIZFILINGS.COM as a service mark on an intent-to-use basis. (Ser. No. 76106587).
On April 8, 2002, Respondent registered the Domain Name. Respondent thereafter used the Domain Name to direct to a website that provided advertising and links to other sites offering various business related services.
The USPTO refused on July 1, 2002 to register Complainant’s BIZFILINGS.COM mark on grounds that it was merely descriptive of the identified services. Complainant did not appeal the final refusal. The application was abandoned on January 3, 2003.
On May 21, 2008, Complainant filed an Intent-to-Use application with the USPTO to register the trademark BIZFILINGS. The USPTO initially refused to register the mark on grounds that it was merely descriptive.
On October 27, 2009, the USPTO registered Complainant’s BIZFILINGS trademark, Registration No. 3,700,794, based on acquired distinctiveness under Section 2(F) of the Lanham Trademark Act. The registration was based on various claims of first use in commerce for different classes of goods and services. The earliest claim of first use in commerce was August 7, 1996, for Classes 35 and 45. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
Complainant offers online products to assist small businesses and entrepreneurs with incorporation, business management, compliance and registered agent services. The company’s products are primarily marketed and sold through its website at “www.”. The company was founded in 1996 and continues to be a leader in the field. Complainant claims revenues of approximately USD 100 million since 1996 from sales of goods and services sold under the BIZFILINGS mark and over 500,000 customers.
Complainant owns the trademark registration for BIZFILINGS, issued October 27, 2009, but claims also that it first used and established protectable common law rights in BIZFILINGS long prior to Respondent’s registration of the Domain Name in April 2002. Complainant cites the traffic statistics for the website from 1996 through 2009, stating that the website “prominently bears the BIZFILINGS® mark.” Complainant’s BIZFILINGS mark appears prominently on advertising and promotional materials for its goods and services.
Complainant asserts that as a result of continuous and extensive use since at least as early as 1996, the BIZFILINGS mark has become well known throughout the small business and entrepreneur community and is an invaluable indicator of the source of Complainant’s high quality goods and services, which the USPTO recognized when it determined that BIZFILINGS had acquired distinctiveness and registered it on the Principal Register.
Complainant alleges that it owned protectable common law trademark rights in the BIZFILINGS mark as of Respondent’s registration of the Domain Name in 2002. As of that time, Complainant says it had been using the BIZFILINGS mark substantially exclusively and continuously in commerce for over five years, which gives rise to a presumption of acquired distinctiveness under United States trademark law. This presumption, Complainant says, is confirmed by the website hits and unique visitors to its website in 2002. Complainant contends that the existence of such common law rights is sufficient to find in favor of Complainant in this case.
Complainant alleges that the Domain is identical or confusingly similar to its BIZFILINGS trademark, differing only in that the Domain Name deletes the letter “s” from BIZFILINGS. This minor modification is insufficient to distinguish the Domain Name from Complainant’s trademark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent uses the Domain Name to direct Internet users looking for Complainant’s website to link farm parking pages from which Respondent earns revenues based on click-throughs to advertisers, many of which are competitors of Complainant. Such use, Complainant says, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has not been commonly known by the Domain Name, is not affiliated with Complainant, and has not been licensed or otherwise authorized by Complainant to use the BIZFILINGS mark.
Finally, Complainant contends that Respondent has registered and is using the Domain Name in bad faith. Complainant claims that it used the BIZFILINGS mark since at least 1996, and that, as a result, it had trademark rights in BIZFILINGS that predate Respondent’s April 8, 2002 registration of the Domain Name.
Following the registration, Respondent posted a parking page website at the Domain Name. The website now features the same topics provided on Complainant’s “www.” website and prominently features the designation BIZFILING.COM at the top of the page. The page contains links to some of Complainant’s competitors.
Complainant contends that Respondent is, for purposes of commercial gain, using the Domain Name, confusingly similar to Complainant’s trademark, to direct Internet users to Respondent’s website where he has promoted the goods and services of Complainant’s competitors, which constitutes bad faith use.
Complainant claims as further evidence of bad faith that Respondent falsified registration of the Domain Name by representing that registration of the Domain Name would not infringe the rights of another. B. Respondent
Respondent contends as follows:
Respondent does not contest that its Domain Name is similar to Complainant’s BIZFILINGS mark. Respondent does challenge the legitimacy of Complainant’s BIZFILINGS registered trademark, contending that its Domain Name is not confusingly similar to a trademark in which Complainant has rights.
On October 27, 2009, the USPTO registered BIZFILING under Section 2(F) of the Lanham Act based on a determination that the mark, although merely descriptive, had acquired distinctiveness. Respondent challenges the legitimacy and effect of that registration on several grounds.
Respondent asserts that Complainant’s claim to the USPTO of first use of BIZFILINGS in commerce on August 7, 1996, is false. Such claims are not examined by the USPTO and in this case the claim is not credible.
The first use date is the same as the date Complainant registered its domain name. Respondent contends that it is unlikely that Complainant could have had a commercial website up and running, using “bizfilings” as a trademark, on the same day that it registered the domain name for that site.
Respondent asserts that Complainant’s claim to the USPTO of having used BIZFILINGS as a trademark since 1996 is false. Complainant’s website was denominated Business Filings Inc. until December 12, 2005. Complainant used the domain name only as an Internet address, not as a trademark.
Respondent points to a prior trademark application Complainant made to the USPTO in 2000 for the mark BIZFILINGS.COM on an intent-to-use basis. The USPTO refused on July 1, 2002, to register the mark on grounds that it was merely descriptive of the identified services. Complainant did not further contest this final refusal on grounds of acquired distinctiveness because, Respondent contends, Complainant had filed its application on the basis of intent- to-use rather than on actual use of the mark and did not amend the application to allege use because it was not actually using the mark as a trademark.
In 2001, Complainant adopted a logo with the acronym BFi and the words Business Filings Incorporated with a “™” symbol, which it used on the website.
Respondent further notes that in making a Section 2(F) declaration of acquired distinctiveness in support of its 2008 trademark application, Complainant stated that its BIZFILINGS mark had acquired distinctiveness as a result of substantially exclusive and continuous use in commerce for more than five years next preceding the date of the application. This declaration would have supported trademark use only as far back as May 2003.
Respondent registered the Domain Name on April 8, 2002, well before Complainant’s application to register its BIZFILINGS mark, believing the Domain Name to be a descriptive term relating to business filings. The USPTO had contemporaneously taken the same view.
Respondent has consistently used the Domain Name in connection with a paid advertising search system, which can be a bona fide offering of goods or services sufficient to create legitimate interests in the Domain Name.
Complainant’s trademark registration, based on acquired distinctiveness, is not retroactive. Respondent’s legitimate use of the Domain Name starting in 2002 cannot become illegitimate as a result of later acts by Complainant.
Respondent did not register the Domain Name in bad faith. Respondent registered the Domain Name prior to the first demonstrated trademark use of Complainant’s BIZFILINGS mark and could not, therefore, have had the required intent to exploit Complainant’s trademark rights necessary to a finding of bad faith.
Complainant has not proved that it had common law trademark rights in BIZFILINGS at the time Respondent registered the Domain Name.
Had Respondent consulted the records of the USPTO in April 2002, prior to registering the Domain Name, Respondent would have found that Complainant had filed an intent-to-use application to register BIZFILINGS.COM. The USPTO refused that application shortly thereafter on grounds of descriptiveness, and Complainant subsequently abandoned it. This would have confirmed Respondent’s belief that its Domain Name was a merely descriptive term.
Had Respondent researched “bizfilings” through inter alia an Internet keyword search, he would have found that it was not being used as a trademark or service mark.
Complainant has not demonstrated how Respondent’s registration of the Domain Name, and subsequent use consistent with its descriptive character, could have been undertaken in bad faith. 6. Discussion and Findings
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Respondent does not contest the similarity of the Domain Name and Complainant’s BIZFILINGS trademark. Respondent does challenge the legal validity of Complainant’s asserted trademark rights in BIZFILINGS.
Under paragraph 4(a)(i) of the Policy, Complainant must have trademark or service mark rights in the mark on which the Complaint is based. The Panel considers the question of trademark rights under this element of the case in the context of present time, i.e. whether Complainant has trademark rights as of the time of filing the Complaint in this case.
Complainant has rights in the BIZFILINGS trademark at least as of October 27, 2009, when the USPTO registered the mark under Section 2(F) of the Lanham Act, 15 U.S.C. § 1052(f), on grounds that the mark, while merely descriptive, had acquired distinctiveness. Registration creates a presumption of validity under United States law. See Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503. Essentially, the effect of this registration is that the USPTO has determined that Complainant has legal rights in the BIZFILINGS mark as of the date of application to the USPTO in May 2008, based on exclusive and continuous use of the mark from at least May 2003. The registration does not establish when Complainant first had trademark rights in BIZFILINGS, but that issue is not relevant under this element of the Policy.
Certain evidence of record casts doubt on whether Complainant was using BIZFILINGS as a trademark or service mark as far back as 2003. Respondent claims and produces some evidence that the first such use did not occur until late in 2005, which would undercut the acquired distinctiveness determination. The scope of the Policy does not enable this Panel, in its view, to “go behind” a trademark granted by a national authority, to find that Complainant’s 2009 United States federal trademark registration is invalid.
The Panel finds that Complainant has present rights in the BIZFILINGS trademark/service mark, that the Domain Name is confusingly similar to Complainant’s trademark, and concludes that Complainant has established the first element of its case. B. Rights or Legitimate Interests
There is often a close interrelationship between the issues of whether Respondent has rights or legitimate interests in a domain name, the second element of a UDRP case, and whether the Respondent registered and is using the domain name at issue in bad faith, the third case element.
Under paragraph 4(c)(i) of the Policy, Respondent may demonstrate that he has legitimate interests in the Domain Name by showing that “before any notice to [Respondent] of the dispute, [Respondent used] . . . the domain name . . . in connection with a bona fide offering of goods or services . . ..” The record supports that Respondent registered the Domain Name and had his website operational well before receiving notice from Complainant in 2008 that there was a dispute. The question of whether Respondent’s website constituted a bona fide offering of goods or services is more problematic. Pay-per-click websites such as the one Respondent operates are often found not to be bona fide offerings of goods or services, but this is not always the case. The issue turns primarily on the content of Respondent’s website at a particular point in time and whether Respondent’s use of the Domain Name was infringing or impairing Complainant’s trademark rights at a given time.
The Panel does not believe the record in this case is sufficient to make these calculations with any precision, but we also find it unnecessary to do so, because, as explained below, the bad faith issue is case determinative. C. Registered and Used in Bad Faith
Complainant must prove that Respondent both registered the Domain Name in bad faith and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii). Registration and use are distinct aspects of the bad faith element; both must be proved. Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. In many UDRP cases, registration and use closely coincide. In the present case, however, the Panel must consider the registration of a domain name that occurred some eight years prior to the current use of the Domain Name.
Respondent registered the Domain Name in April 2002. At that time, Complainant did not have a registered BIZFILINGS trademark. That mark was not registered until October 2009, more than seven years later. Complainant contends that even though it did not have a registered trademark at the time Respondent registered the Domain Name, Complainant nevertheless had established common law trademark rights through the use of in conjunction with its website during the period 1996-2002.
Common law trademark rights, if proved, can serve as the basis of a UDRP case and a decision granting relief to the complainant. See e.g. Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. In order to prove common law rights in a trademark, the complainant must show that the mark has acquired secondary meaning or acquired distinctiveness through use as a trademark over time. See Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083.
In support of its argument for common law rights, Complainant points primarily to its website at “www.”, citing statistics on the number of hits on, and unique visitors to, its site during the period from 1996 to April 2002. The Panel assumes the validity of the statistics, but they do not carry the issue here. The statistics in themselves do not demonstrate the use of “” or “bizfilings” as a trademark or service mark. On the contrary, Respondent produces strong evidence that “bizfilings” was not in fact being used as a trademark during this period.
In April 2002, Complainant in fact had a pending intent-to-use application to the USPTO to register the mark BIZFILINGS.COM, but the USPTO had issued an initial refusal to register this mark on grounds that it was merely descriptive of the identified services. At least as of May 2002, Complainant was arguing to the USPTO that the mark had acquired distinctiveness, but the USPTO rejected that argument. On July 1, 2002, the USPTO issued a final refusal to register the mark, stating that Complainant’s argument that the proposed mark had acquired distinctiveness as a trademark was unpersuasive. The USPTO found that “” was merely a domain name, an address on the Internet, but not a service mark. Complainant did not appeal the final refusal, and the application was subsequently abandoned.
Complainant argues that this earlier application to the USPTO is irrelevant to the present case, but the Panel finds otherwise. The history and resolution of the BIZFILINGS.COM application in the USPTO suggests that, as of the time in question there, Complainant did not consider “” to be a trade or service mark in actual use in commerce (as Complainant filed its initial application on an Intent-to-Use basis), that the USPTO did not consider “” to be a protectable trade or service mark because it was merely descriptive of services offered, and that Complainant was not able to persuade the USPTO that it had protectable trademark rights in “” on grounds of acquired distinctiveness as a trademark or service mark because “” was not functioning as a trademark or service mark.
Complainant’s website statistics are not sufficient to establish common law trademark rights in the web address by which the site is accessed. An Internet address and a trademark are not per se the same thing. The USPTO made this point in refusing to register the domain name as a service mark. A web address is not in itself protected by trademark law.
Other evidence produced by Respondent in this case supports the conclusion that Complainant had not used “” as a trademark. In fact, it appears to have used other “marks” or denominations, including Business Filings Incorporated and BFi, as apparent service marks identifying its website, with “” functioning only as a web address until some later time. Respondent’s evidence suggests that Complainant did not start using BIZFILINGS as a trademark until December 2005, and Complainant has not produced evidence of an earlier definitive trademark use.
The Panel finds that Complainant has not demonstrated on the record before this Panel that by April 2002, it had established common law trademark rights in or, for that matter, in BIZFILINGS, the later registered mark.
The consequence of Complainant’s failure to prove that it had an established trademark in “bizfilings” or “” as of April 8, 2002, is that Respondent, in registering the Domain Name, would have been entitled to reach the conclusion that Complainant did not have such rights and that Respondent could register the Domain Name in good faith without infringing or impairing Complainant’s trademark or goodwill in its mark. See John Ode d/b/a ODE and ODE – Optimum Digital Enterprises v. Intership Ltd.,WIPO Case No. D2001-0074. Even if Respondent was aware of Complainant’s website, which is possible although not proved on the record, the Policy does not protect one domain name from another’s use of a similar domain name. The essence of the Policy is protection of trademark rights, not domain names.
The Panel concludes that Complainant has failed to prove that Respondent registered the Domain Name in bad faith. On that basis, Complainant’s case fails and its request for relief must be denied. It is unnecessary to reach the issue of whether ongoing use of the Domain Name is in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John R. Keys, Jr.
President Panelist
Michelle Brownlee
Panelist
Alan L. Limbury
Panelist
Dated: October 1, 2010
Full & Egal Universal Law Academy