The Complainant is Dynamis Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wragge & Co., UK.
The Respondent is Alice Stephen Uppal of Drums, Pennsylvania, United States of America (“USA”), represented by John Berryhill, Ph.D., Esq., USA. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On December 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced December 12, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response January 1, 2014. The Response was filed with the Center December 16, 2013.
The Center appointed Christopher J. Pibus, Richard W. Page and Matthew S. Harris as panelists in this matter on January 13, 2014. 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 paragraph 7 of the Rules.
The Complainant filed supplemental submissions on December 20, 2013, and the Respondent filed supplemental reply submissions on January 13, 2014. 4. Factual Background
The Complainant is an incorporated company under the laws of England and Wales. The Complainant was originally incorporated under the name Businesses For S Limited, but changed its name to Dynamis plc and then again to Dynamis Limited.
The Complainant owns the domain name which was originally registered on December 14, 1995 by Business 2 Business Limited and used in connection with a publication called Business and Premises for Sale. It was then transferred to the Complainant in 1999.
The Complainant’s website at “www.businessesfors” serves as a platform to bring together buyers and sellers of businesses from many different countries. The Complainant generates revenue principally from advertisers (private sellers, brokers and franchisors) who pay to advertise their businesses. The Complainant is not involved in the actual transactions whereby advertised businesses or franchises are sold.
The Complainant’s website has over 300,000 registered users and attracts more than 1 million unique users each month. Approximately 65,000 businesses are currently advertised for sale on the Complainant’s website. The Complainant spends GBP 75,000 on marketing its website each month. The Complainant advertises worldwide, but focuses on its core markets of UK, USA, Canada, Australia, South Africa and France. The Complainant’s website generated profits of GBP1.23 million for the financial year ended on March 31, 2012.
The Respondent registered the disputed domain name on December 15, 2010. At the time the Complaint was filed, the disputed domain name reverted to a website that provides a platform for the purchase and sale of businesses. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that the disputed domain name is virtually identical to its common law trademark BUSINESSESFORSALE.COM. The Complainant submits that the deletion of the letters “es” at the end of “businesses” does not distinguish the disputed domain name from the Complainant’s common law trademark. Rights or Legitimate Interests
The Complainant submits that the Respondent has no business relationship with the Complainant and has not been licensed or permitted to use the Complainant’s common law trademark BUSINESSESFORSALE.COM. The Complainant further contends that the Respondent has used the disputed domain name in association with a website that has been deliberately designed to mimic the Complainant’s website, and to mislead Internet users seeking the Complainant’s website, diverting them to the Respondent’s website. The Complainant contends that this use does not constitute a bona fide offering of goods and/or services under the Policy. Furthermore, it is noted that the Respondent does not have a registered trademark for the “” name. Registered and Used in Bad Faith
The Respondent is alleged to have engaged in a pattern of activity designed to confuse Internet users into believing that the Respondent’s website at “www.” is related to the Complainant’s website and business. The Respondent has designed her website to mimic the Complainant’s website by replicating the blue header with the title “Businessfors” in white text, incorporating tabs at the bottom of the header with identical sub-titles, and utilizing text which is predominately blue with orange accents. The Respondent has replicated text and content from the Complainant’s website. The Respondent misleadingly suggests that she has been operating the business for several years, whereas it was actually only launched two years ago. The Respondent claims to be the world’s favourite website of its kind, when in fact the Complainant holds this position. The Respondent has contacted the Complainant’s clients, and has copied listings from the Complainant’s website, and used them on her own website without permission.
The Complainant submits that the Respondent must have known about the Complainant’s rights in the BUSINESSESFORSALE.COM mark, because the Complainant’s website at “www.businessesfors” is so well-known in the industry and because the Respondent virtually copied the Complainant’s website.
Lastly, the Complainant contends that the Respondent has offered to sell the disputed domain name for an inordinately high price, which is in excess of her out-of pocket incurred expenses. B. Respondent Identical or Confusingly Similar
The Respondent contends that the Complainant does not have rights in the mark BUSINESSESFORSALE.COM noting that the Complainant’s UK trademark application for the mark was denied. The Respondent submits that the Complainant willfully omitted this material fact in this proceeding.
With respect to common law rights, the Respondent submits that the Complainant fails to provide sufficient evidence to establish the elements required to support common law rights. The Respondent contends that the term BUSINESSESFORSALE.COM is descriptive if not generic and that it is not distinctive of the Complainant. The Complainant has not provided evidence suggesting that the Complainant’s long-standing use of BUSINESSESFORSALE.COM has resulted in the relevant public recognizing the phrase as exclusively denoting the Complainant’s services. The Respondent relies on Internet searches which located many third parties who use the phrase “Businesses For Sale” in combination with other elements. The Respondent highlights references such as “” and “”. The Respondent also submits that in the Complainant’s own country, there are other entities which use the phrase “businesses for sale” such as “”.
The Respondent admits that a descriptive mark is capable of acquiring distinctiveness through use, but only when that use is substantially exclusive. The Complainant has not provided any evidence to support such exclusive use of the common and generic phrase “businessesfors”.
The Respondent also submits that previous panels have found that in cases of descriptive marks, small differences matter in terms of a confusion analysis. Many domain names have been found not to be confusingly similar to descriptive marks based on small differences. In this case, the deletion of the letters “es” is a small difference, but because the mark in question is so descriptive, the disputed domain name should not be found to be confusingly similar. Rights or Legitimate Interests
The Respondent is using the disputed domain name for the legitimate purpose of operating a website offering the services of advertising businesses for sale. The Respondent argues that because “businessesfors” is so descriptive, the small difference in the disputed domain name means that the Respondent is entitled to use the domain name in association with a website which offers the services of advertising businesses for sale. Registered and Used in Bad Faith
The Respondent claims that the Complainant is attempting to turn the UDRP into a copyright proceeding by inviting a determination of whether elements of the websites are functional or expressive. The Respondent contends that this is not the appropriate forum to claim copyright infringement or unfair competition. The Respondent further submits that she did not target the Complainant to re-sell the disputed domain name for a price higher than out-of-pocket expenses. The Respondent purchased a domain name that was made up of descriptive and generic terms and she is therefore free to use it to compete in the common field which it describes. The Respondent has accordingly not registered or used the disputed domain name in bad faith under the Policy. C. Supplemental Filings Complainant’s Supplemental Filing
Arguing that the Response raises a new issue not addressed in the Complaint, namely the refusal of the UK trademark application, Complainant seeks to make a supplemental filing. The Complainant contends that the fact that the UK application was refused does not mean that the Complainant does not have rights in the mark as required by the Policy. A trademark application can be refused for a variety of grounds, for example the mark may be contrary to public policy or morality, or if the mark describes characteristics of the goods/services covered. The Complainant has conceded it does not own a registered trademark for the mark BUSINESSESFORSALE.COM, but claims that it does in fact own substantial common law rights, which is permitted under the Policy.
The Complainant submits further evidence of acquired distinctiveness arising from use of the mark BUSINESSESFORSALE.COM. Respondent’s Supplemental Filing
The Respondent maintains that the Complainant is withholding material information by refusing to explain why the UK trademark application was denied. The Respondent contends that such refusal means that the Panel can assume the denial before the UK Trademarks Office was based on “substantive grounds” that the mark in question was descriptive or generic in nature.
The Respondent also challenges the Complainant’s additional evidence of common law use of the mark BUSINESSESFORSALE.COM. 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 disputed 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary Finding On Supplemental Filings
The majority of the Panel is prepared to accept the supplemental filings, but only with respect to the narrow issue of the UK trademark application. The additional evidence of common law use put forward by the Complainant ought to have been presented in the original Complaint, as it should naturally have formed part of the original case as filed. B. Identical or Confusingly Similar
The threshold issue in this proceeding is whether the Complainant has established through its evidence the existence of common law trademark rights sufficient to support its Complaint.
The Respondent has rightly objected to the failure of the Complainant to disclose the refusal of its trademark application before the UK Trademarks Office. This was a material fact, and it should have been obvious to the Complainant that it needed to disclose the circumstances of the refusal and to explain (if it could) why its common law rights ought to be recognized in the absence of registration. The Complainant has taken the trouble to file supplemental arguments ostensibly to address this issue but inexplicably has failed to explain the circumstances of the refusal of its application. The majority of the Panel accepts the Respondent’s argument that a negative inference ought to be drawn from the Complainant’s failure to candidly address this issue.
It is well established that common law rights in a trademark can provide a sufficient basis for a complaint under the Policy, subject always to proof of those rights through cogent and convincing evidence. Where unregistered rights are put forward as the sole basis for a claim, and the words comprising the unregistered mark in question are descriptive in nature, then the evidentiary requirement is significantly raised. In those circumstances, proof that a descriptive common law mark has acquired distinctiveness (that is, a sufficient level of recognition so that the mark denotes a single source to consumers) is a necessary element in a complainant’s case.
With this framework in mind, the evidence of the Complainant must be carefully examined. The facts set out in the Complaint are summarized in section 4 of this Decision. The Complainant relies on lengthy use of its domain name and associated website (17 years) and a description of its current evidently successful level of web-based activities (65,000 business now advertised on the site; 300,000 registered users). Current advertising expenses (GBP 75,000 per month) are also noted. According to the Complainant, this evidence demonstrates that the Complainant’s mark is now widely used in connection with its business. The Complainant’s submissions on this issue include a final conclusory paragraph:
“Owing to the longevity of trading of BusinessesForS and extensive advertising, the Complainant has substantial goodwill and reputation in relation to the term BusinessesForS. Amongst those in the business of buying and selling ongoing concerns, the term is well known, and it has come to denote services originating solely from the Complainant.”
In the view of the majority of the Panel the evidence does not clearly support the Complainant’s conclusion on this issue. The evidence as a whole does not convincingly demonstrate (rather than simply stating) that the terms in question have “come to denote services originating solely from the Complainant”.
The Respondent’s evidence focuses on the Complainant’s failure to prove that there has been “substantially exclusive” use of the mark in question, sufficient to establish distinctiveness. The Respondent relies on Google searches to show how commonly the terms “business for sale” and “businesses for sale” have been adopted in association with the services these terms describe. The evidence raised significant questions about distinctiveness of the Complainant’s trademark.
The majority of the Panel has also examined the Complainant’s website pages (as annexed to the Complaint) and has not detected any clear indication from the Complainant itself that it presents the name “businessesfors” as a trademark. For an international website, it would be a simple matter to include some form of trademark notice or legend (for example, using the TM designation), which would clearly communicate that the Complainant itself is asserting trademark rights in certain words or logo presentations. No such marking occurs. In fact, the domain name is prominently displayed along with a star design, but directly underneath it are the plainly descriptive words “Businesses For Sale”. It is difficult to conceive of a more graphic demonstration that the principal elements of the putative trademark are in fact directly descriptive of the enterprise and services themselves.
With all the evidentiary issues outlined above, the threshold question remains whether the Complainant has established sufficient trademark rights for the purposes of the Policy. On the basis of the limited evidentiary record before us (which excluded the Complainant’s supplementary evidence on distinctiveness), the majority of the Panel is not prepared to find that the necessary trademark rights have been established.
In spite of these findings, the majority of the Panel wishes to make it clear that a different decision could be reached in a different judicial context. Further, the majority of the Panel does not intend that this decision be interpreted as if it approves to any degree the conduct of the Respondent in designing and implementing its website in the way that it has chosen to do.
Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In light of the findings with respect to the absence of trademark rights, the Panel does not address this issue. D. Registered and Used in Bad Faith
In light of the findings with respect to the absence of trademark rights, the Panel does not address this issue. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Matthew S. Harris
Panelist
Date: January 31, 2014 Dissenting Opinion
Unlike my colleagues, I would accept the Parties’ supplemental filings in their entirety. In my opinion, the Complainant’s showing of common law rights is sufficient for the purpose of this UDRP proceeding. I cannot condone the activities of the Respondent which I see as failing to establish rights or legitimate interests and evidencing bad faith registration and use. I would rule for the Complainant.
Richard W. Page
Panelist (Dissenting)
Full & Egal Universal Law Academy