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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

B & S Limited v. Gabor Varga and Jozsef Petho

Case No. DIE2006-0005

 

1. The Parties

The Complainant is B & S Limited, Donybrook, Dublin, Ireland, represented by Matheson Ormsby Prentice, Ireland.

The Respondents are Gabor Varga and Jozsef Petho, Dublin, Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <buy-sell.ie> is registered with IE Domain Registry Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2006. On November 7, 2006, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain names at issue. On November 8, 2006, IE Domain Registry Limited transmitted by email to the Center its verification response inter alia confirming that the Respondents are listed as the registrants, providing the contact details for the registration and confirming that the .IE Dispute Resolution Policy (the “IEDR Policy”) applies to the registration. The Center verified that the Complaint satisfied the formal requirements of the Policy, the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on November 10. In accordance with the IEDR Rules, the due date for Response was November 30, 2006. The Respondent did not submit any response prior to the deadline and accordingly, the Center notified the Respondent’s default on December 4, 2006.

The Center appointed James Bridgeman as the sole panelist in this matter on December 12, 2006. 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 IEDR Rules.

Subsequent to the appointment of the Panel, the Respondents submitted a late Response that was considered by the Panel.

 

4. Factual Background

The Complainant is the registered proprietor of the following trademark registrations:

- Irish registered trademark No. 155138 Buy & Sell Device registered on January 14, 1993, in respect of certain goods in Class 16;

- Community Trademark registration No. 2428928 Buy & Sell Device registered on February 26, 2003, in respect of certain goods in Class 9 goods; and

- Community Trademark registration No. 1530765 BuyandSell.net Device registered on July 10, 2001, in respect of certain goods in Class 9.

Since 1990 the Complainant has published and distributed throughout the island of Ireland a classified advertising publication entitled “Buy & Sell”. In August 2005, the title of the publication was amended to “Buy and Sell” because it was not possible to incorporate an ampersand in a domain name.

Both private individuals and businesses place advertisements in the Complainant’s “Buy & Sell” publication. Private individuals may place a limited number of free advertisements. Revenue is derived partly from advertisers and partly from sales of the publication through newsagents and other retail outlets.

The Complainant publishes both national and regional editions of the publication each week.

The Complainant is the owner of the domain name <buyandsell.ie> and has a website established at that Internet address on which businesses and private individuals also place advertisements. The Complainant’s <buyandsell.ie> website receives over 4 million hits per month and is one of the busiest websites based in Ireland.

The Respondents registered the domain name at issue on January 12, 2006. On the same date they registered BUY-SELL.IE as a Registered Business Name pursuant to the Registration of Business Names Act 1963.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name <buy-sell.ie> be transferred to the Complainant.

In addition to its rights in the abovementioned registered trademarks the Complainant also claims to enjoy a substantial goodwill and therefore unregistered or common law trademark rights in the name of its publication “Buy & Sell”. Such common law trademark rights are also protected by the law of passing off in both jurisdictions on the island of Ireland. At present the Complainant’s publication “Buy & Sell” carries on average over 70,000 free advertisements per week and the magazine has a circulation of over 83,000 each week.

The Complainant’s publication and website each benefit from the synergy created by their respective reputations and the advertising and promotion of each. The Complainant has spent substantial sums in promoting both its magazine and its website on television radio and other media.

The Complainant claims that its extensive use in the course of trade of the name B UY & SELL, the name BUY & SELL has acquired a secondary meaning and distinctiveness such as to be recognised by the Irish public as a trademark of the Complainant. The name BUY & SELL is generally associated with the Complainant’s publication and no one else’s.

The Complainant submits that the domain name in dispute is identical or misleadingly similar to the Complainant’s trademark Buy & Sell. The Respondents have merely replaced the ampersand (&) and the conjunctive “and” with a hyphen (-) in forming the disputed domain name. The key elements of the Complainant’s Protected Identifiers are clearly incorporated into the latter.

Internet users seeking access to the Complainant’s website may use a hyphen (-) instead of the word “and” and therefore the domain name <buy-sell.ie> will mislead such users in this regard.

The Complainant submits that the Respondents have no rights in law or legitimate interests in respect of the domain name. The Complainant is not aware of any evidence that at any material time the Respondents have ever had any rights or legitimate interests in, or have ever indicated any legitimate use of, the domain name in dispute. The Respondents have no link whatsoever with the Complainant. The Complainant has not licensed or otherwise authorised the Respondents to use the Complainant’s Protected Identifiers in the sense of the .IEDR Policy or to apply to register the domain name.

The Respondents have registered a number of other business names and corresponding domain names on the .ie ccTLD, which relate to a number of well-known third party trademarks such as ADIDAS, IPOD, NIKE and ECONOMIST that, like the domain name in dispute in casu, resolve to the Respondents’ website at the <eubrowser.com> address.

The Complainant submits that the Respondents’ efforts to attract Internet users to their website through confusion with the Complainant’s Protected Identifiers and other well-known third party trademarks obviate any possibility that the domain name <buy-sell.ie> is being used in connection with either the good faith offering of goods or services or operation of a business.

The Complainant also submits that the registration of a business name per se does not constitute evidence of a demonstrable preparation to use the domain name n connection with a good faith offering of goods or services, or operation of a business in accordance with paragraph 3.1.1 of the IEDR Policy, as the purpose of such a business name registration is merely to enable the Respondents to comply with the formal registration requirements of the .ie Domain Registry in order to register the domain name in dispute.

Accordingly, the Complainant submits that neither the registration by the Respondents of the Registered Business Name BUY-SELL.IE nor the registration of the domain name <buy-sell.ie> itself, entitles the Respondents to use that name in the course of business as it would conflict with the Complainant’s Protected Identifiers.

Agents for the Complainant sent a cease and desist letter dated July 7, 2006, to the Respondents setting out the Complainant’s claims to ownership of the BUY & SELL trademark, stating that the Complainant had established a reputation and goodwill in the said trademark, stating that the Complainants are furthermore the owners of the <buyandsell.ie> domain name and calling on the Respondents to cancel the registration of the domain name in dispute. The Respondents did not respond to the said cease and desist letter and the Complainant submits that their failure to respond further indicates that the Respondents have no rights or legitimate interest in the domain name and that they have registered and are using the domain name in bad faith.

The Complainant furthermore submits that:

(i) the domain name <buy-sell.ie> has been registered and/or used primarily in order to prevent the Complainant from reflecting its Protected Identifiers in a corresponding domain name;

(ii) the Respondents have through their use of the domain name, intentionally attempted to attract internet users to a website by creating confusion with the Complainant’s Protected Identifiers; and

(iii) the Respondents have intentionally provided misleading and/or false information when applying for the domain name <buy-sell.ie>.

The Complainant also relies on the Respondents’ pattern of conduct as a clear indication of their bad faith. The Complainant submits that the Respondents have registered business names corresponding to well-known third party trademarks, including the ones mentioned above, as well as the names of a number of countries including England, Belgium, and Estonia. The vast majority of these Registered Business Names have also been registered as domain names on the .ie ccTLD by the Respondents including the domain name in dispute in casu.

The Respondents obviously have no rights in these well-known trademarks, country names or the Complainant’s Protected Identifiers. The Respondents are using these .ie domain names, including the domain name at issue, to confuse people into accessing the Respondents’ website “www.eubrowser.com”, presumably for commercial gain.

The Respondents are evidently engaged in the act of “stockpiling” various domain names some of which constitute well-known trademarks including the Complainant’s Protected Identifiers. The Complainant submits that this pattern of conduct, on the part of the Respondents, is a factor which should be taken into account in determining bad faith in respect of the registration and subsequent use of the domain name in dispute.

It is quite clear that at the time of registration of the domain name in dispute, the Respondents were well aware of the reputation of the Complainant’s Protected Identifiers. The Respondents are resident in Dublin. The Respondents cannot be but aware of the reputation in the island of Ireland of the Complainant’s Protected Identifiers. The Complainant submits that, given the significant degree of renown of the Complainant’s Protected Identifiers in the island of Ireland, it is highly unlikely that the Respondents chose the domain name <buy-sell.ie> for its descriptive qualities or some other genuine reason independently of the Complainant’s Protected Identifiers. The Complainant submits that this view is compounded by the Respondents’ pattern of conduct in respect of other well-known third party trademarks and the misleading/false contact details that have been provided for the domain name <buy-sell.ie>.

Accordingly, the Complainant submits, pursuant to paragraph 2.1.2 of the IEDR Policy, that the Registrant’s have registered and/or are using the domain name <buy-sell.ie> primarily in order to prevent the Complainant from reflecting its Protected identifiers.

The domain name <buy-sell.ie> currently resolves to a website maintained by the Respondents at the “www.eubrowser.com” website, which is purporting to offer for sale various categories of goods such as computers, property and cars all of which are advertised and sold by individuals and businesses through the Complainant’s publication “Buy & Sell” and website “www.buyandsell.ie”, which reflect the Complainant’s Protected Identifiers.

The Complainant submits that the use of the domain name <buy-sell.ie> by the Respondents amounts to “initial interest confusion” where it is intended to confuse Internet users as to the ownership of the domain name <buy-sell.ie> given the fact that it is identical or misleadingly similar to the Complainant’s Protected Identifiers. The Complainant submits that the Registrant’s pattern of conduct discussed above makes this intention obvious.

The Complainant also submits that the domain name <buy-sell.ie> has been selected and is being used with the intent to confuse and redirect internet users to the Respondents’ website “www.eubrowser.com”. As the Registrant’s website purports to offer for sale various categories of goods, which are also sold by individuals and businesses under the Complainant’s website “www.buyandsell.ie”, the Respondents have designed their website in such a way as to create further confusion on the part of Internet users into thinking that they have reached the Complainant’s website.

Accordingly, the Complainant submits, pursuant to paragraph 2.1.4 of the IEDR Policy, that the Respondents have through the use of the domain name in dispute, intentionally attempted to attract Internet users to a website or other online location by creating confusion, with the Complainant’s Protected Identifiers.

The Respondents have clearly provided misleading and/or false information when applying to register the domain name in dispute. Such an attempt to conceal the address of at least one of the Respondents and providing a fictitious address for the business name registration underlying the application for the domain name <buy-sell.ie> plainly demonstrates bad faith on the part of the Respondents.

Accordingly, the Complainant submits, pursuant to paragraph 2.1.6 of the IEDR Policy, that the Respondents have applied for and/or are using the domain name <buy-sell.ie> in bad faith by providing misleading or false information when applying for the domain name registration.

On the basis of the above, the Complainant submits that the Respondents have clearly registered and/or are using the Domain name <buy-sell.ie> in bad faith for the purposes of paragraph 1.1.3 of the IEDR Policy.

B. Respondent

The Respondents deny each and every allegation made in the Complaint. The Respondents further submit that this is a case of reverse domain name hijacking and that after having had every opportunity to register the name itself, the Complainant now wishes to obtain the domain only because the registrants have registered it. The Complainant could have registered the domain name in question, but for its own reasons decided not to do so while continuing to register other domain names. The Complainant has registered at least one domain name and has an active website.

The Respondents are legitimate business people and are fully intent on developing and expanding their interests. They intend to expand and to move their business to a well known business incubation centre in Dublin. Their new beta version of their website is running and they have attached print out of the home page of the site as an annex to the Response.

The Complainant cannot claim a monopoly on words of plain common origin. The Complainants marks are very weak generic device marks and should not be afforded wide or monopoly type protection.

The Respondents deny that the domain name in dispute is identical or confusingly similar to any trademark or service mark in which the Complainant allegedly has rights.

The Complainant has not registered trademarks related to the Internet activity carried out by the Respondents. The activities of the Complainant are predominantly specialised popular hard copy advertisement publications.

There exists no likelihood of confusion on the part of the public which includes the likelihood of association with the Complainant’ earlier marks. The public are not and would not in any way be confused, deceived or call to mind an association between the domain name in dispute and the Complainant’s trademarks.

The Respondents have rights or legitimate interests in respect of the domain name that is the subject of the Complaint. The registrants have an official valid Irish Registered Business Name and a copy of the Certificate of Registration of Business Name issued by the Companies Registration Office has been annexed to the Response.

Because the IEDR accepted the Respondent’s registration, the Respondents submit that these proceedings are not the appropriate jurisdiction to bring this dispute and the proceedings should instead be brought before the Courts of Ireland.

The Respondents registered the domain name in dispute on January 12, 2006. The Registered Business Name was registered legitimately and lawfully on the same date. Prior to, and since then, the Respondents have been researching and developing their online model and have invested in software and a website. The first beta version of the website is now visible online. Immediately following registration the domain name pointed to an intermediary home page. It is only after this work and preparation have been undertaken that the Respondents heard any communication from the Complainant displaying any interest in the domain.

The Respondents identified a large number of domain names that incorporate the words “buy” and “sell”, that have been registered on both gTLDs and ccTLDs, and state that they also are entitled to register a domain name with those generic words.

Before the Respondents received any notice of the dispute, there is evidence of the Respondents use of, or demonstrable preparations to use, their mark and domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondents (as individuals, business, or other organisation) have been or are commonly known by the domain name at issue, even if the Respondents have acquired no trademark or service mark rights.

The Respondents are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

The Respondents deny that the domain name has been registered and is being used in bad faith. The Respondent deny each of the allegations in that regard made by the Complainant.

The Complainant and the Respondents are not competitors and the domain name was not registered by the Respondents primarily or at all to disrupt the Complainant business. Clearly there has been no adverse impact upon the Complainant or their business. No evidence of lost business has been claimed and no evidence of confusion has been asserted or proven.

The disputed domain name was registered and is being used in good faith in conjunction with building a larger online search engine presence. Online commerce and trademark protection for online activities have not heretofore formed part of the Complainant business model, nor has there been any inclination or concern with registering the domain name the subject of this dispute.

The Respondents have no intention of selling, renting, licensing or otherwise transferring the disputed domain name as this would be detrimental to their own developing online model.

In these circumstances it would be unjust for the Respondents to be forced to transfer the domain name.

The Respondents point out that they have spent time, resources and money in applying for the Registered Business Name, domain name and in developing, researching and promoting the online search engine project. Now they are reluctantly being forced to expend time, effort and legal fees in dealing with this Complaint – which they feel is unjustified given that, up until recently, the Complainant showed no interest in the domain name and only displayed an interest for the first time after the registrants had registered the Registered Business Name and the domain.

 

6. Discussion and Findings

Paragraph 1 of the IEDR Policy places on the Complainant the obligation to establish a prima facie case that:

1.1.1 the domain name at issue is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and

1.1.2 the Registrants have no rights in law or legitimate interests in respect of the domain name at issue; and

1.1.3 the domain name at issue has been registered or is being used in bad faith.

The difficulty in this case is that the Complaint is based on claimed rights in the use of very descriptive and generic trade marks and device registrations while on the evidence, the Respondents are clearly engaged in a pattern of registering Internet domain names that are identical or confusingly similar to well known trade marks.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of the trademark registrations mentioned in paragraph 4 above, each of which are device marks. While there is no disclaimer on any of the registrations in respect of the words BUY or SELL or either of them, on the face of it the Respondents are correct in their assertion that the Complainant could not establish a monopoly in the use of either of these words, separately or in combination.

This Panel cannot determine the extent to which the Complainant may have acquired common law rights in the specific domain name or the extent to which its use of the name BUY AND SELL, whether with an ampersand or otherwise, and its use of its registered device trademarks has resulted in the acquisition of secondary meaning and distinctiveness as claimed. That being said, the Complainant has provided evidence of extensive trademark use of the name BUY & SELL as the title of its publication. It has made out a prima facie case that the words have acquired a secondary meaning and distinctiveness in the weekly magazine market in Ireland. It has also established that it has rights in the abovementioned trademark registrations and while any protections that the Complainant may have acquired for such rights may be narrow and limited in themselves, all of the above taken together are sufficient to establish a prima facie case that the Complainant has protectable rights and goodwill in the identifiers BUY & SELL and BUY AND SELL.

The domain name <buy-sell.ie> is clearly confusingly similar to the name of the Complainant’s BUY & SELL and BUY AND SELL magazine and the dominant element in its registered device trademarks.

In reaching this conclusion about such obviously descriptive and generic marks, the Panel notes, and is fortified by the fact, that the evidence, discussed infra, indicates that the Respondents chose the domain name in dispute because of its association with the name of the Complainant’s magazine and the website established by the Complainant at the <buyandsell.ie> address and the goodwill associated therewith.

The Complainant has therefore established the first element of the test in paragraph 1 of the IEDR Policy.

B. Rights or Legitimate Interests

While the motivation of the Respondents is clearly commercial, there is no evidence that they are carrying on any business using the domain name or any similar name.

They have a Registered Business Name and they have provided evidence of that registration, but they have not provided any evidence that they are engaged in any business activity using the name BUY-SELL.IE. Moreover, the registration of a Registered Business Name as such does not give any intellectual property rights in Irish law. The documentation that has been provided by the Respondents indicates that their commercial activities, such as they may be, are carried out in their own names and using the trading style FIRSTPAGE.IE PRESS.

The Respondents appear to be registered for value added tax in partnership using that business name and it appears on their value added tax declaration form. They claim to be developing a website for the domain name in dispute and to have a beta version of the website on line. They claim to have a plan to move into a business centre in the near future, but they have not produced any supporting documentation relating to this planned move. The print-outs of the beta version of the website are not convincing and no evidence of any real business activity on their parthas been submitted.

The Complainants have made out a prima facie case that the Respondent’s have no Rights or legitimate interest in the domain name and the Respondent’s have not met the burden that rests on them as a result to establish such rights or interest.

Furthermore the IEDR Policy expressly states at paragraph 1.2 that the registration of the domain name the subject of the dispute does not constitute rights in law or legitimate interest in respect of the domain name.

The Respondents claim to have rights in the domain name in dispute in casu are based on their Registered Business Name and on their claim to be engaged in establishing a website for social contact.

The Complainants have submitted that the Respondents are stockpiling a large number of Internet domain names that include well known trademarks. In particular the Complainants allege that the Respondents have registered a number of other business names and corresponding .ie domain names, which relate to a number of well-known third party trademarks such as ADIDAS, IPOD, NIKE and ECONOMIST that resolve to the Respondents’ website at “www.eubrowser.com”. The Respondents have had the opportunity to address this allegation and have chosen not to do so.

The Respondent’s failure to explain why they have registered a portfolio of domain names and Registered Business Names that include a number of famous trademarks owned by third parties lead this Panel to infer that they do not intend to use their domain name portfolio for legitimate purposes.

The Respondents have put forward the argument that before they received any notice of the dispute, they had made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. They have not supported this claim with evidence. The only item of evidence presented to support that argument is the print-out of what purports to be the beta version of the planned website. For reasons given supra this Panel does not accept that the Respondents are planning a bona fide use of the domain name. The web page that they have presented is very basic in structure and content even for a beta version of what they say they planned to establish at the Internet address of the domain name in dispute.

Similarly, there is no evidence that the Respondents (as individuals, business, or other organisation) have been or are commonly known by the domain name at issue, as they claim. There is no evidence that they have used their Registered Business Name for any purpose to date.

Presumably the Respondents’ assertion that they are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue has been included in the Response as a formality as it contradicts the other claims made by the Respondents.

This Panel is satisfied on the balance of probabilities that the Respondents have no legitimate interest in the domain name.

This decision, in circumstances where the Complainant’s mark is generic, is supported by the consensus view of panelists under the UDRP as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions to be found at

http://www.wipo.int/amc/en/domains/search/overview/index.html#22

“2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?

Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right if it uses for a site for apples but not if the site is aimed at selling computers or pornography). (…)

However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

The Panel is conscious that the consensus was developed by panelists under the UDRP but is of the view that the findings in the report are of value in interpreting and applying the IEDR Policy also because of the similarity of the concepts and the wide experience of UDRP panelists in dealing with Internet domain name disputes. In casu, the Complainant’s magazine is very well known, the Respondents have registered a portfolio of Internet domain names and Registered Business Names including a number of well-known third party distinctive trademarks and it would appear that the Respondent intends to take advantage of the goodwill of the Complainant’s business in this instance.

The Panel is satisfied that the Complainant has established the second element of the test in paragraph 1 of the IEDR Policy

C. Registered and Used in Bad Faith

The evidence is that the Respondents have registered the domain name in dispute in casu as part of a portfolio of domain names that include the domain names that are identical to or similar to widely known trademarks owned by third parties. This pattern of registrations makes it difficult to believe that the Respondents registered the domain name at issue with any intention of establishing a bona fide website as they claim.

The Respondents claim to have registered the domain name <buy-sell.ie> intending to use it as the address of a website containing a browser and networking facility for social contacts and on which there will be no buying or selling. The Respondents state that it is intended that those using their website would discuss items that they have bought or sold. This is a most unlikely reason to choose this name.

Because the Complainant’s magazine is so well known in Ireland and has such a large circulation, it is most unlikely that the Respondents were unaware of the Complainant’s magazine when they registered the domain name in dispute.

Furthermore the Complainant had registered the domain name <buyandsell.ie> and established a website at that address prior to the date on which the Respondents registered the domain name in dispute. Again, it is most unlikely that the Respondents were unaware of the Complainant’s domain name and website.

There is a conflict in the evidence relating to the Complainant’s claim that the Respondents have intentionally provided misleading and/or false information when applying to register the domain name <buy-sell.ie>. Without more evidence it is not possible for this Panel to make a determination in that regard.

Taken together, the fact that the Respondents are engaged in a pattern of registration of well known trademarks as domain names and their probable prior knowledge of the Complainant’s magazine and website lead this Panel to infer that the domain name was registered in bad faith.

The Complainant has therefore, on the balance of probabilities, established the third element of the test in paragraph 1 of the IEDR Policy.

Having established the three elements in the test in paragraph 1 of the IEDR Policy, the Complainant is therefore entitled to succeed in these proceedings.

For reasons given above, this Panel finds that the Complainant is not engaged in reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 1.1 of the IEDR Policy the Panel orders that the domain name <buy-sell.ie> be transferred to the Complainant.

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James Bridgeman
Sole Panelist

Dated: December 26, 2006