START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

BNI Enterprises, Inc. and BNI Franchise Corp. v. Mr. B T Smith a/k/a Tom Smith

Claim Number: FA0205000113259

 

PARTIES

Complainant is BNI Enterprises, Inc. and BNI Franchise Corp., San Dimas, CA, USA (“Complainant”) represented by Adam R. Bialek, of Wilson, Elser, Moskowitz, Edelman & Dicker LLP.  Respondent is Mr. B T Smith a/k/a Tom Smith, Sutton Surrey, GREAT BRITAIN (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bni.biz>, registered with Total Web Solutions.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Rodney C. Kyle as Panelist.

 

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

 

Complainant submitted a Complaint to the Forum electronically on May 3, 2002; the Forum received a hard copy of the Complaint on May 6, 2002.

 

On May 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

 

A timely Response was received and determined to be complete on June 3, 2002.

 

Complainant’s Additional Submission was received and determined to be complete on June 10, 2002.

 

On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Rodney C. Kyle as the single Panelist.

 

RELIEF SOUGHT

Complaint paragraph 7 is that "The Complainant, BNI, requests that the Panel issue a decision that orders the transfer of the domain-name registration from the Respondent to the Complainant, BNI.  As the Respondent has acted in bad faith, Complainant requests

Respondent be required to pay costs and reasonable attorneys fees for the commencement of this arbitration."

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes two main sets of contentions in the Complaint.

 

First, by Complaint paragraph 4, basically that the Respondent is as stated in the "Parties" paragraph hereof and, by Complaint paragraph 5 items "a" and "b", that the domain name at issue and the Registrar thereof are as stated in the "Registrar and Disputed Domain

Name" paragraph hereof.

 

Second, by Complaint paragraph 5 item "c", that Complainant's "Trademark/Service Mark Information" is "International Class 035.  US Class 100, 101 and 102. Good and Services rendered:  BNI organizes weekly business meetings for the purpose of

developing business networking between people for the purpose of promoting business connections and relationships" and, by Complaint paragraph 6, that

 

BNI is a corporation that does business internationally.  The purpose of BNI is to foster referrals by its members to other members within a chapter. BNI owns and/or operates and/or oversees over 2200 local chapters internationally compromising in excess of 50,000 members.  A BNI chapter is compromised of approximately 12 to 30 members, each representing one vocation or trade.  A purpose of BNI is to help generate business by passing referrals from member to member.

The respondent was the Chapter Director for the Leatherhead Chapter in Surrey, Great Britain, from March of 2001 to March of 2002.  In March of 2002 the respondent stepped down as Chapter Director of this Chapter.  At this time Mr. Smith has no involvement or association with BNI or the Leatherhead Chapter.

respondent has no practical or legal right to the bni.biz domain name.  He has no affiliation with BNI and would not be using the site for any business or other purpose.  Though it appears that the respondent may have had a practical purpose when he requested ownership, he no longer is associated with BNI, and thus he has no use for the bni.biz site.  Respondent’s only current purpose for ownership of the site is to extort and/or blackmail BNI to paying the respondent for transfer of rights to the site.  This is a clear case of cybersquating on a domain name.

a.                   The manner in which the domain name is identical to a trademark or service mark in which the Complainant has rights: 

Annexed hereto as Exhibit A is a chart of marks registered to BNI in the US, Canada, New Zealand, UK, Australia and South Africa.  In addition, attached as Exhibit B is a list of primary domain names registered by BNI.

b.                  The reason respondent has no rights or legitimate interests in respect of the domain name that is the subject of this Complaint is as follows:

Respondent is no longer affiliated with BNI.  He no longer runs, operates or manages the BNI Leatherhead Chapter in Surrey, England.  He is not a member of this or any other BNI Chapter.  He has no involvement in the marketing, soliciting, organizing or development of BNI internationally or locally in England.  Upon information and belief, Respondent has no other business interest in the name BNI and has no legitimate interest in the domain name.

The respondent is not the rightful owner or beneficiary of a trade or service mark identical to the domain name;

The respondent has made no offering of goods or services corresponding to the domain name.  If respondent were to make an offering of goods or services using the BNI name, this would be a violation of trademark law and also a strict breach of the contract respondent signed with BNI when he first became a manager of the chapter.  The contract provides, in sum and substance, that respondent is not permitted to use the BNI name or logo for a purpose.  Thus, the use of the BNI mark would not be possible.  Annexed hereto as Exhibit “C” is a copy of the Leadership Team Agreement signed by Respondent.

Individually, respondent has not been commonly known by the domain name.

c.                   The domain name should be considered as having been registered or used in bad faith because:

It is possible that at the time respondent applied for the domain name he may have had a good faith basis to apply for and use the domain name.  Respondent, however, cannot use the domain name at this time in good faith.  He has no relationship with BNI and has no practical purpose for using the domain name.  BNI has requested that he relinquish the domain name and he refused.  Respondent has requested a substantial monetary fee for relinquishing the domain name.  It is clear that respondent’s only reason for maintaining the domain name is to force BNI to pay him a substantial monetary payment.

The respondent has given no indication that he would transfer the domain name to BNI if BNI pays his costs associated with obtaining the domain name.  In fact, BNI has offered to pay the costs to Respondent, but the Respondent has refused.  Respondent has demanded a non-designated fee for relinquishment of the domain name.

            (Emphasis in original.)

 

B. Respondent

Respondent makes three main sets of contentions in the Response.

 

First, by Response paragraph 2, that "The following domain name is the subject of this

Response: bni.biz" and, by Response paragraph 3, basically that the Respondent is as

stated in the "Parties" paragraph of these reasons for decision.

 

Second, by Response paragraph 6, that

The Respondent is an employee of RUitS Ltd. RUitS Ltd was established in 1999 and formally incorporated in 2000. This is a matter of public record and can be verified at the UK Government records available at http://www.companieshouse.gov.uk/info/

The main and sole business activity of RUitS Ltd is Website Development. RUitS Ltd has been contracted to build a website for the British Nursing Institute based at 18 Vale Road, Sutton, Surrey, SM1 1QH. RUitS Ltd has agreed with the British Nursing Institute to underwrite 33% of the capital cost of this website in return for a share of the website revenue generated.

The domain name bni.biz was registered in good faith as a normal part of our business practices as Website Developers for the British Nursing Institute. RUitS Ltd made no attempt to register bni.biz when the registration process began last year because we had no client requirement to do so.

At no time did we approach the Complainant about this domain name. At no time did we make any request for financial or any other recompense. We have no intention of doing so in the future. The only request on our part, as instructed by our client, was the polite and formal written request for all communications to be in writing.

Despite knowing that we are a Website Development business, at no time did the Claimant request details of our reasons, intentions or the nature of the business represented by the purchase of the domain name, hence their lengthy submission of unrelated matters. It is an inherent part of the business practices of any Website Development Company to purchase domain names on behalf of their clients. Similarly, it is sound business practice by Website Development Companies to transfer the registrant's name to the client only when the contract has been delivered and fulfilled by both parties.

It is worth noting that despite the Claimant's lengthy list of domain names that include the letters 'bni', it does not own, nor have they challenged the ownership of the TLD, bni.net, which is owned by the company Business Network Inc. In addition to sharing the same acronym, they share a remarkably similar but unrelated business name. This is just one example, amongst many, that Business Network International do not own nor have the challenged the ownership of Domain Name Registrants with just the three letter acronym 'bni'.

It is our strongly held belief, that Business Network International's sole purpose in stating untrue allegations in their claim are a spurious attempt to gain ownership of a prized domain name.

            (Emphasis in original.)

 

            Third, by Response paragraph 7, that

In response to the Claimants allegations, RUitS Ltd, as a recognized independent business represented by Mr B T Smith subscribed as a fee paying member of Business Network International between the period 01Oct00 and 30Sep01. As an independent  member of Business Network International, between the period 01Apr01 - 30Sep01, RUitS Ltd volunteered for the unpaid position of Chapter Director which involves chairing a weekly meeting and various administrative duties associated with managing the group of over 25 different business representatives, including our own business as Website Developers. Following the expiration of the annual subscription and associated costs to RUitS Ltd of over US$1,000, we did not continue with subscribing after 30Sep01, and did not attend any further weekly meetings, thereby resigning on 30Sep01.

RUitS Ltd continues it's strong business links and associations with the independent members of Leatherhead and other UK Groups. We regularly pass and receive business referrals and recommend prospective new members to various groups throughout England & Scotland. As a Website Development Company, we continue to provide a number of free websites, free hosting space and free email addresses for past and existing members.

The dates and allegations specified by the Claimants against the Respondent are wholly and factually incorrect as well as being unconnected with the ownership claim.

We completely refute the Claimants allegation that a request for a substantial monetary fee for relinquishing the domain name was made. This is a blatant untruth. It is understandable why they have failed to state the alleged amount or in any way tried to substantiate this allegation because it is completely untrue. We initiated no form of communication with the Claimant and have made no requests for financial recompense and have absolutely no intention of doing so. The only request on our part, as instructed by our client, was the polite and formal written request for all communications to be in writing. This followed 2 phone calls by the Claimants to the Respondent in which they demanded ownership of bni.biz. The Respondent was verbally abused and threatened with legal action if he did not comply immediately.

            (Emphasis in original.)

 

FINDINGS

1.      The Panel has a duty to not include the above-mentioned Additional Submission as part of the basis for deciding the Complaint.

2.      The Panel has a disability against awarding the relief requested in the second sentence of Complaint paragraph 7.

3.      It has been proven in this proceeding that within Policy paragraph 4(a)

(i)                  the domain name at issue is identical to a trademark or service mark in which the Complainant has rights;

(ii)                the Respondent has no rights or legitimate interests in respect of the domain name at issue; and

(iii)              the domain name at issue has been registered or used in bad faith.

 

DISCUSSION

GENERAL

Paragraph 15(a) of the STOP 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.”

 

There are both procedural and substantive aspects to this case.

 

PROCEDURAL ASPECTS

The two main procedural aspects of this case are as to the above-mentioned (i) Additional Submission; and (ii) request for cost-related relief.

 

Additional Submission

Paragraph 1 of the Policy includes that the

Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Start-up Trademark Opposition Policy (the "Rules") … and the selected administrative dispute resolution service provider's supplemental rules.

And Rule 8 includes that

All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental Rules.

 

Supplemental Rule 8 is such a supplemental rule and is as follows: "The Complaint, Response, and additional written statements and documents provided in Paragraph 12 of the STOP Rules and Paragraph 7 of these Supp. STOP Rules constitute the complete record to be considered by the Panel." Supplemental Rule 8 applies to this case. (Rule 12 is as follows: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." Rule 12 does not apply to this case.)

 

As a result of Supplemental Rule 8 applying to this case, the Panel has considered Supplemental Rule 7 which is as follows:

a. A party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) calendar days after the date the Response was submitted or the last date the Response was due to be submitted to the Forum, whichever occurs first.

b. Each submission must:

1. be timely received by the Forum;

2. be accompanied by an additional submission fee of $250;

3. include proof of service of these submissions upon the opposing party(s);

4. be submitted in either hard copy or electronic form.

c. The opposing party may respond, in hard copy or electronic form, to an additional submission filed in accordance with Supp. STOP Rule 7(a); such response must be submitted to the Forum and the opposing party(s) within five (5) calendar days after the date the additional submission was submitted.

d. No amendments may be made to the Complaint or Response.

 

Supplemental Rules 7(a), 7(b) and, at least initially, 7(d), appear to apply to this case. Supplemental Rule 7(a) appears to have not been complied with since the Additional Submission's 10 June 2002 receipt by the Forum is after that Supplemental Rule's five day deadline; non-compliance with Supplemental Rule 7(b)(1) therefore appears to result. As well, there is no indication that the Supplemental Rule 7(b)(2) fee of $250 accompanied the Additional Submission, so there is no indication of compliance with that Supplement Rule. Moreover, there is no indication that the Additional Submission includes the Supplemental Rule 7(b)(3) proof of service of the Additional Submission upon the Respondent, so there is no indication of compliance with that Supplement Rule. Therefore, Supplemental Rules 7(a) and 7(b) having apparently not been complied with, the Panel considers it unnecessary to address compliance with Supplemental Rule 7(d) and instead finds, especially in view of Rule 10(b), that the Panel has a duty to not include the above-mentioned Additional Submission as part of the basis for deciding the Complaint. (Rule 10(b) is that "In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.")

 

Request for Cost-Related Relief

Policy paragraph 4(i) provides that "The remedies available to a Complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the transfer of your domain name registration to the Complainant." Especially in view of Policy paragraph 4(i), the Panel finds that the Panel has a disability against awarding the relief requested in the second sentence of Complaint paragraph 7.

 

SUBSTANTIVE ASPECTS

General

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1)    the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

In view especially of Rule 15(a), the Panel notes three rules and principles of law that it deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a Complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a Respondent against whom it is contended, is an admission by that Respondent, so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[2]

 

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on pertinent UDRP precedent where applicable.

 

Complainant’s Rights in the Mark

In general (i) under the STOP proceedings, a STOP Complaint may only be filed when a domain name at issue is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form, so every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights; and (ii) the existence of the “.biz” generic top-level domain (“gTLD”) in the domain name at issue is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which a Complainant asserts rights.

As well, the Panel makes two findings in view of applying the above-mentioned underlined three rules and principles of law to each party's contentions on this element. (Those contentions comprise especially what is characterized above as each party's "First" main set of contentions as well as Complaint paragraph 5 item "c" and the preamble, and first sentence, in Complaint paragraph 6 item "a".)

First, for the purposes of this proceeding Respondent does not dispute and instead admits Complainant's contentions that, within the meaning of the Policy paragraph 4(a)(i) expression "[the Respondent’s] domain name is identical to a trademark or service mark in which the Complainant has rights", (i) a domain name registration of <bni.biz> exists and Total Web Solutions is the registrar, and Respondent is the registrant, thereof; and (ii) said domain name is identical to a trademark or service mark in which the Complainant has rights in "International Class 035. US Class 100, 101 and 102. Good and Services rendered:  BNI organizes weekly business meetings for the purpose of developing business networking between people for the purpose of promoting business connections and relationships" and that "The manner in which the domain name is identical to a trademark or service mark in which the Complainant has rights: Annexed as [the Complaint's] Exhibit A is a chart of marks registered to BNI in the US, Canada, New Zealand, UK, Australia and South Africa."

 

Second, evidence tendered as being rationally probative of (i.e. as being relevant to) establishing those two facts "i" and "ii" becomes immaterial, and hence inadmissible, as to establishing them.

 

In view of all of the above, the Panel finds the domain name at issue is identical to a trademark or service mark in which the Complainant has rights. The Panel therefore finds Policy paragraph 4(a)(i) is proven.

 

Respondent’s Rights or Legitimate Interests

By Policy paragraph 4(c), in respect of the domain name at issue,

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii): 

(i)                  [The Respondent is] the owner or beneficiary of a trade or service mark that is identical to the domain name; or

(ii)                Before any notice to [the Respondent] of the dispute, [the Respondent's] 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

(iii)              [The Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights.

 

The Panel makes two findings in view of applying the above-mentioned three underlined rules and principles of law to each party's contentions on this element. (Those contentions comprise, especially via Complaint paragraph 6 item "b", Complainant's contentions of negatives of Policy paragraphs 4(c)(i), 4(c)(ii) and 4(c)(iii) and, especially via Response paragraph 6, Respondent's contentions of legal interests of third parties such as a RUitS Ltd. as a contended employer of Respondent and as a contended contractor to a contended "British Nursing Institute".)

 

First, for the purposes of this proceeding Respondent does not dispute and instead admits Complainant's contentions on this element.

 

Second, evidence tendered as being rationally probative of (i.e. as being relevant to) establishing Complainant’s contentions on this element becomes immaterial, and hence inadmissible, as to establishing them.

 

In connection with the first of those two findings, the Panel notes that as in Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) so too in this case: a Respondent's assertion of rights of a third party to demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) does not avail when that third party has not formally intervened in the proceeding.

 

Furthermore, as in Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) so too in this case: while the burden is initially placed on the Complainant to show that a Respondent does not have rights or legitimate interests in a domain name, after such a showing is made, the burden then shifts to the Respondent “to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.” Respondent has not done so since, as in Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002), so too in this case: a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue”, in that the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios was, without evidentiary support, insufficient to establish that she had rights or interests in respect to the domain name at issue in that case.

 

In view of all of the above, the Panel finds the Respondent has no rights or legitimate interests in respect of the domain name at issue. The Panel therefore finds Policy paragraph 4(a)(ii) is proven.

 

Registration or Use in Bad Faith

By Policy paragraph 4(b), in respect of the domain name at issue,

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:

(i)                  Circumstances indicating that [the Respondent has] registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly related to the domain name; or

(ii)                [The Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or

(iii)              [The Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)               By using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.

 

On this element the contentions effectively include (i) in the Complaint (especially via the first sub-paragraph and first three sentences of the third sub-paragraph of the preamble of Complaint paragraph 6 and via the preamble in, and first three sentences of, Complaint paragraph 6 item "c"), that bad faith use by the Respondent is occurring through the Respondent's passive holding of the domain name at issue; and (ii).in the Response, especially via Response paragraph 6, that legal interests of or relating to third parties (such as a RUitS Ltd. as a contended employer of Respondent and as a contended contractor to a contended "British Nursing Institute") avail the Respondent against those contentions of bad faith use.

 

Respondent's contentions of legal interests of or relating to third parties no more avail the Respondent under Policy paragraph 4(a)(iii) than did like contentions by Respondent under Policy paragraph 4(a)(ii). As for the facts of Complainant's contentions of passive holding, which contentions of fact Respondent basically admits, the Panel notes that as in Telstra v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) so too in this case: passive holding of a domain name can, and in this case does, constitute bad faith use.

 

In view of all of the above, the Panel finds the domain name at issue has been registered or used in bad faith. The Panel therefore finds Policy paragraph 4(a)(iii) is proven.

 

DECISION

The registration of the domain name at issue is to be transferred to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

 

 

 

Rodney C. Kyle, Panelist

Dated: 4 July 2002

 

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