Complainant is B, LLC a corporation formed in the State of Delaware, United States of America (“U.S.”), with an address in Tustin, California, US, represented by Pistone & Wolder, LLP, U.S.
Respondent is Alliance Capital Management of New York, New York, U.S. represented by Kenyon & Kenyon LLP, U.S. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2012, the Registrar 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 on October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Response was filed with the Center on November 6, 2012.
The Center appointed Richard Page as the sole panelist in this matter on November 20, 2012. 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.
As part of the analysis in this proceeding, the Panel has accepted and considered the submissions entitled Complainant Reply to Respondent dated November 13, 2012 and Respondent’s Surreply dated November 16, 2012, Complainant’s Supplemental Reply dated November 27, 2012 and Respondent’s Supplemental Surreply dated November 30, 2012. 4. Factual Background
Complainant is a limited liability company formed in the State of Delaware, U.S. Complainant is solely an Internet social media business without a traditional store front or “brick and mortar” presence. As such, the foundation of Complainant’s business is based upon its ability to create a website presence that highlights its brand (BEEHIVE).
Complainant claims to be the owner of U.S. Federal Trademark Registration No. 85573362 for the word BEEHIVE (the “BEEHIVE Mark”) with three class designations all relating to online services. The Disputed Domain Name was created on September 24, 1991.
Respondent is a U.S. based corporation. Complainant’s Mr. Allan Gleisinger has had conversations with Respondent’s Sr. Vice President, Counsel and Corporate Secretary, Ms. Mona Bhalla in regards to purchasing the Disputed Domain Name. Ms. Bhalla said that Respondent would only sell the Disputed Domain Name for USD 100,000. No sale of the Disputed Domain Name has been consummated. 5. Parties’ Contentions A. Complainant
Complainant claims to be the owner of U.S. Federal Trademark Registration No. 85573362 for the BEEHIVE Mark with three class designations all relating to online services. Complainant contends that the Disputed Domain Name is identical with or confusingly similar to the BEEHIVE Mark, because the Disputed Domain Name contains the entirety of the BEEHIVE Mark.
Complainant contends that the Disputed Domain Name was created on September 24, 1991 and registered on September 16, 2009. However, the Disputed Domain Name has never resolved to any form of website. The beehive identity is not associated with Respondent’s corporate identity or future business plans of its parent or affiliates.
Complainant further contends that Respondent has never been known as “beehive” and has not attempted to put the Disputed Domain Name into use as shown by its lack of relevant trademark or service mark rights. Complainant argues that the Disputed Domain Name has been sitting idle for 21 years and that there is no evidence of the use of the Disputed Domain Name in conjunction with any product line of Respondent. Complainant is not aware of any good faith effort to use the Disputed Domain Name in conjunction with a bona fide offering of goods or services.
Complainant asserts that Respondent’s core business is financial services and there exists no offering within its product line that correlates to the word “beehive” and that Respondent’s activities have nothing to do with a beehive.
Complainant alleges that its president, Mr. Allan Gleisinger, made a good faith effort to acquire the Disputed Domain Name. Mr. Gleisinger contacted Respondent and was directed to Ms. Mona Bhalla who was appointed as Respondent’s contact to negotiate the sale of the Disputed Domain Name. After multiple conversations, Ms. Bhalla left Mr. Gleisinger a voicemail stating that Respondent would be willing to sell the Disputed Domain Name for nothing less than USD 100,000 and if interested Mr. Gleisinger should return the call and “if not then it was good speaking with you.”
Complainant believes that Respondent, during this apparent good faith negotiation process, attempted to extort an excessive amount of money in association with the transfer of the Disputed Domain Name which Respondent recognized as being extremely important to Complainant. Not only is “b” the name of Complainant, it is also the principal element in Complainant’s BEEHIVE Mark and the sole source of Complainant’s brand.
Complainant’s business success depends upon its ability to obtain the Disputed Domain Name. Absent that, Complainant will not be able to brand itself and create an online identity. Complainant’s online monetization mechanism is affectionately called “Sting”, maintaining consistency with the beehive imagery. Complainant’s business plan would no longer make sense without control of the Disputed Domain Name.
Complainant concludes that its ability to raise money from investors so far has been adversely impacted as a result of its inability to obtain the Disputed Domain Name associated with Complainant’s identity. If Complainant had the Disputed Domain Name during its efforts to raise capital, it would not have had to give up as much in equity. Respondent has no intent to use Disputed Domain Name, which has been idle for over 20 years. B. Respondent
Respondent contends that U.S. Trademark Registration No. 85573362 relied upon by Complainant to establish its trademark rights is an intent-to-use application for the BEEHIVE Mark which has not yet been approved. Therefore, Complainant has not presented any evidence that it has enforceable trademark rights for purposes of this proceeding.
Respondent further contends that it has rights and legitimate interests in the Disputed Domain Name. Respondent has been using the Disputed Domain Name in a unix-to-unix-copy intranet site known as the Research Platform supporting Respondent’s business of asset and investment management. While the site was not available to the public, it was in service as a clearing house for Respondent’s employees to share research.
Respondent further contends that the negotiation for the purchase of the Disputed Domain Name by Complainant was originally carried on in 2006 and culminated in an offer from Complainant to purchase for USD 80,000. For Respondent to have countered with a purchase price of USD 100,000 in 2011 does not demonstrate bad faith use of the Disputed Domain Name. Furthermore, Complainant has presented no evidence of bad faith registration. C. Complainant’s Reply
Complainant argues that the use of the Disputed Domain Name in an intranet site called the Research Platform is not sufficient to create rights or legitimate interests in this proceeding. Therefore, it cannot support the creating of rights or legitimate interests by Respondent in the Disputed Domain Name. In addition, Complainant alleges that the intranet site called the Research Platform was put into use only after this proceeding was commenced.
Complainant replies that the testimony via declaration in this proceeding of Ms. Bhalla is false regarding the negotiations which took place with Mr. Gleisinger. Complainant continues to maintain that the USD 100,000 offer to sell is several times in excess of any independently suggested market value of the Disputed Domain Name and supports a finding of bad faith. D. Respondent’s Surreply
Respondent re-asserts that its use of the Disputed Domain Name as its intranet Research Platform supports its contention of rights and legitimate interests.
Respondent re-asserts the truthfulness of Ms. Bhalla’s declaration and argues that the negotiation for purchase of the Disputed Domain Name engaged in by Mr. Gleisinger demonstrates good faith. E. Complainant’s Supplemental Reply
Complainant attacks the sufficiency and veracity of the declarations filed by Respondent. In addition, Complainant offers citations to several decisions in support of the points made in its previous submissions. F. Respondent’s Supplemental Surreply
Respondent reiterates that its declarations are truthful and distinguishes the decisions cited by Complainant in its Supplemental Reply. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant claims to be the owner of U.S. Federal Trademark Registration No. 85573362 for the BEEHIVE Mark with three class designations all relating to online services. Complainant contends that the Disputed Domain Name is identical with or confusingly similar to the BEEHIVE Mark, because the Disputed Domain Name contains the entirety of the BEEHIVE Mark.
Respondent challenges the enforceability of the BEEHIVE Mark. Respondent alleges that the BEEHIVE Mark registration is an intent-to-use application which has not yet been approved by the United States Patent and Trademark Office. Complainant has not contested Respondent’s assertion. Therefore, the Panel finds that claimed U.S. Federal Trademark Registration No. 85573362 is not a proper basis for asserting enforceable trademark rights in this proceeding.1
Complainant has not developed a theory of common law trademark. Therefore, the Panel finds that Complainant has failed to show enforceable trademark rights and Complainant cannot meet the requirements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a), Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
The Policy, paragraph 4(c), allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Respondent contends that it has rights and legitimate interests in the Disputed Domain Name. The use to which the Disputed Domain Name has been put was in a unix-to-unix-copy intranet site known as the Research Platform used for Respondent’s business of asset and investment management. In addition, the Disputed Domain Name was used for at least one employee’s email address. While the site was not available to the public, it was in service for the sharing of research within Respondent. See FormLine Information d/b/a GroupLink v. Credit Suisse Grp., NAF 96750.
Complainant alleges that any use of the Disputed Domain Name occurred only after the filing of this proceeding. Respondent has filed declarations attesting that a predecessor, Sanford C. Bernstein, has used the Disputed Domain Name since 1993. Respondent further demonstrates that it acquired the Disputed Domain Name through acquisition in 2000, and has used it continuously since then.
The Panel finds that Respondent’s use preceded the filing of this proceeding and that this use was in connection with a bona fide offering of goods and services pursuant to the Policy, paragraph 4(c)(i). Therefore, Complainant has failed to show that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b), sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant alleges that Respondent through its representative Ms. Mona Bhalla negotiated the sale of the Disputed Domain Name in bad faith by refusing to sell for less than USD 100,000. Complainant further alleges that this sale amount is several times more than any independently suggested sale value.
Complainant alleges that the Disputed Domain Name is of critical importance to the development of its Internet social media business, while it is of little consequence to Respondent. Complainant asserts that this disparity makes the unwillingness of Respondent to compromise even more unreasonable.
Respondent contends that the negotiation for the purchase of the Disputed Domain Name by Complainant originally began in 2006 and culminated in an offer to purchase from Complainant of USD 80,000. Respondent further contends that to have countered with a purchase price of USD 100,000 does not demonstrate any bad faith use. Furthermore, Complainant has presented no evidence of bad faith registration. The Panel notes that the Disputed Domain Name was registered years before the Complainant filed its trademark application with the United States Patent and Trademark Office.
The Panel finds that the four (4) non-exclusive criteria of the Policy, paragraphs 4(b)(i-iv), do not include elements regarding any appraised value for the Disputed Domain Name, the relative importance of the Disputed Domain Name between the Parties or a refusal to reduce an offered sale price. Additional criteria may be considered collectively to support a finding of bad faith beyond the four (4) non-exclusive criteria of the Policy, paragraphs 4(b)(i-iv). However, no convincing evidence has been presented to support a determination of bad faith. The element of offering to sell the Disputed Domain Name needs to be shown in conjunction with a passive holding of the Disputed Domain Name. In this matter, Respondent has shown a use of the Disputed Domain Name sufficient to establish rights and legitimate interests.
Therefore, the Panel finds that Complainant has failed to show sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard W. Page
Sole Panelist
Date: December 2, 2012
1 The Panel has visited the United States Patent and Trademark Office’s website and notes that application serial No. 85573362 is pending.
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