Williams,
Babbitt & Weisman, Inc. v. Ultimate Search
Claim Number: FA0108000098813
PARTIES
Complainant is Williams, Babbitt & Weisman, Inc., Boca Raton, FL (“Complainant”). Respondent is Ultimate Search, Central, Hong Kong (“Respondent”) represented by John Berryhill, of Dann, Dorfman, Herrell, & Skillman.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <wbw.com>, registered with BulkRegister.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Tyrus R. Atkinson, Jr., M. Scott Donahey, and Milton Mueller, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 6, 2001; the Forum received a hard copy of the Complaint on August 7, 2001.
On August 9, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <wbw.com> is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wbw.com by e-mail.
A timely response was received and determined to be complete on September 4, 2001.
Complainant’s Supplement To Complaint In Accordance With the Uniform Domain Name Dispute Resolution Policy was filed on September 11, 2001. Respondent’s Supplemental Response under the Forum’s Supplemental Rule 7 was filed on or about September 12, 2001.
On
September 24, 2001, pursuant to Respondent’s request to have the dispute
decided by a three-member Panel, the
Forum appointed Tyrus R. Atkinson, Jr., M. Scott Donehey, and Milton Mueller, as
Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Williams, Babbit & Weisman, Inc. is a corporation organized under the laws of the State of Florida on October 6, 1989.
On February 8, 1997 Complainant registered their corporate web site under the domain name wbw-wwc.com.
The reason that the name <wbw.com> was not used at that time was because Windsurf Bicycle Warehouse had already registered the domain. The bicycle company had a legitimate use for the name.
In April 2001 a “whois database search” showed that the <wbw.com> domain name registration had expired. The bicycle company was no longer in business.
Complainant attempted to watch for the domain’s release but before Complainant could register the domain name <wbw.com>, Respondent registered the domain name.
Respondent is registering expired domain names as they immediately become available.
Respondent is attempting to drive traffic to their site by hijacking unsuspecting web users looking for legitimate companies.
Respondent relies on search engine sites, which do not update their databases resulting in an unsuspecting web user being directed to Respondent’s site.
Respondent has linked numerous unrelated domain names to their web site.
Respondent is in violation of Paragraphs 4. (a.), (b.), and (c). of the Policy, the contested domain name is identical or confusingly similar with the Complainant’s service mark, and the Respondent has used the contested domain name in bad faith by taking advantage of search engine links to the <wbw.com> expired site.
B. Respondent
Ultimate Search, Inc. is an organization doing business in Hong Kong.
Ultimate Search, Inc. operates a variety of websites based upon generic terms and short domain names, in order to derive referral advertising revenue.
Respondent is engaged in a pattern of registering generic terms, short letter combinations, and descriptive terms that are amenable to the Respondent’s advertising business.
Mere registration of a large number of such domain names is not evidence of any variety of bad faith cognizable under the Policy.
Respondent does not seek to sell such domain names, but to develop them into shared advertising portals by which various parties may benefit by shared use of such short or generic terms, rather than to sequester the use of such terms as a monopoly of a single party. Respondent has been, and intends to continue to use the domain name as a pooled advertising portal.
Respondent employs so-called “wildcard” DNS settings such that any term typed at the third-level of one of the Respondent’s domain names will resolve to the same site as the base domain name.
Complainant, in simply stating that the letters “WBW” are the letters corresponding to the first letters of Williams, Babbit & Weisman, fail to establish a trade or service mark claim.
There was no reason for Respondent to believe that registering an abandoned domain name of a defunct business was not a legitimate registration.
Complainant did not challenge the prior registrant, and the Complainant acquiesced in the fact that it did not have the domain name. Complainant provides no reason why the Respondent is not entitled to rely on inaction by the Complainant. There was no reason for Respondent to have believed anything other than that the domain name was available for general registration and use when the previous registrant abandoned it.
Complainant fails to show that Respondent has no rights or legitimate interests in the domain name at issue.
There is no evidence to support the notion that the Respondent, operating in Hong Kong, knew or should have known of the Complainant.
Complainant fails to show bad faith on the part of Respondent..
C. Additional Submissions
Complainant’s Supplement To Complaint In Accordance With The Uniform Domain Name Dispute Resolutions Policy.
Complainant contends that it has a common law service mark representing WB&W, which can be seen on the WBW-WWC.COM (Williams, Babbit and Weisman-World Wide Collections) web site since 1997. WBW.COM would represent the service mark in URL form.
Complainant contends that the use of expired (and in this case unrelated) domain registrations to drive Internet traffic to an advertising web site for commercial gain, is not a legitimate reason to register a domain name, and such registration is, in itself, bad faith.
Respondent’s Supplemental Response Under NAF Rule 7.
Complainant does not show how long it has used the stylized depiction of a “WB&W” logo on its website as a trademark, rather than as a stylized representation of its trade name. Complaint does not offer evidence of consumer recognition of this logo, and the logo is not used as a trademark to identity any brand of goods or services.
Complainant seeks to expand the Policy beyond predatory behavior predicated on trademarks to making subjective judgments about what uses of domain names are worthy and what uses are not.
FINDINGS
1. Complainant is Williams, Babbit & Weisman, Inc., a commercial collection agency, doing business as a corporation in Boca Raton, Florida.
2. Complainant uses the letters “WB&W” along with the words “Williams, Babbit & Weisman, Inc. on its web page for the site titled <wbw-wwc.com>, but Complainant offers no proof that it has exclusive rights, or common law rights to the letters “WB&W”.
3. Complainant has no registered trademarks or service marks.
4. Complainant uses the Internet to promote its services under the domain name <wbw-wwc.com> that represents the term “Williams, Babbit & Weisman-World Wide Collections”.
5. At the time of registration of <wbw-wwc.com>, Complainant could not obtain registration of <wbw.com> since a company named “Windsurf Bicycle Warehouse” already held that registration.
6. Complainant concedes that “Windsurf Bicycle Warehouse” legitimately held the domain name <wbw.com> until the now defunct bicycle company abandoned the domain name.
7. Complainant meant to obtain the domain name <wbw.com> for its own use when it became available but before it could do so, Respondent obtained the domain name.
8. Respondent is a business operating in Hong Kong, which is engaged in a pattern of registering domain names in large quantity for advertising purposes not clearly explained in the pleadings.
9. Respondent concedes that it derives revenue from operation of a web site at <wbw.com>.
10. The domain name <wbw.com> is not identical or confusingly similar to a mark proved to be the property of Complainant.
11. Complainant fails to show that Respondent lacks legitimate rights and interests in the domain name <wbw.com>.
12. Complainant fails to show that Respondent registered and is using the domain name <wbw.com> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
The first element to be proved by Complainant in order to prevail under this section is that the Complaint has rights to trademark or service mark identical or confusingly similar to the domain name registered by Respondent. All Complainant has shown is a copy of Complainant’s web page that shows the letters “WB&W” on the upper left part of a page titled “Williams, Babbit & Weisman, Inc”. That showing is insufficient to prove common law rights to “WB&W” or “WBW”. As was stated in Business Architecture Group, Inc. v. Reflex Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001),
“To establish common law rights, the Complainant must show that the mark has
acquired distinctiveness when associated with the Complainant’s goods or services.
No evidence was supplied to indicate that Complainant had established such
distinctiveness prior to Respondent’s domain registration. Complainant simply
alleged that it has been ‘known by’ the acronym ‘B.A.G.’ since 1996. This
allegation merely supports a finding that the term was used as a tradename, but not
that it was used as a trademark. Marbil Co. Inc. v. Sangjun Choi, D20001275
(WIPO Nov. 23, 2000); Kendall v. Mayer Re skipkendall.com, D2000-0868 (WIPO
Oct. 26, 2000).”
Complainant in this dispute makes no attempt to prove distinctiveness of any mark. It makes no effort to show a secondary meaning for the letters “WB&W” or “WBW” such that consumers would be likely to associate the domain name <WBW.COM> with the Complainant.
The fact that Complainant has used the letters WBW in connection with other letters as a domain name does not change the conclusion that must be drawn. see Business Arthitecture Group, Inc. v. Reflex Publishing, FA 97051 (Nat. Arb. Forum June 5, 2001) cited above where the disputed “BAG” was used by Complainant in the domain names <BAG-works.com>, <BAGonline.com> and <BAGinc.net>. These variations gave the Complainant no rights to contest and obtain the domain name <BAG.COM>.
Complainant fails
to establish this element. Since
Complainant must prevail on each of the three required elements to prevail, the
failure to establish any of the three requires a finding for Respondent. see
Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a).
Rights or
Legitimate Interests
Complainant offered no evidence satisfactory to prove that Respondent was without rights or legitimate interests in respect of the domain name as required by Paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy.
Respondent
contended that before any notice to it of a dispute, it used the domain name in
connection with a bona fide offering of goods or services. That is to say, Respondent added the domain
name to its already large list of domain names that Respondent contends are
used in an advertising venture. see Paragraph 4(c)(i) of the Uniform Domain
Name Dispute Resolution Policy.
Complainant counters this by arguing that the practice of registering defunct names to attract advertising hits is deceptive or inimical to the interests of Internet users. Neither the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.
Registration and
Use in Bad Faith
Complainant provided no evidence that Respondent registered the name specifically to divert customers from or disrupt the business of Complainant, which finding would be required under the UDRP to prove bad faith as applied to the facts and circumstances of this domain name dispute. see Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy.
The request to transfer the domain name <WBW.COM> to Complainant
is denied.
Tyrus R. Atkinson, Jr. Chairman, for the Panel
M. Scott Donahey, and Milton Mueller , Panelists
Dated: October 8, 2001
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