MBO Partners, Inc. v. MyBizHomepage, Inc.
Claim Number: FA1004001319466
Complainant is MBO Partners, Inc., represented by Lori
S. Meddings, of Michael Best & Friedrich LLP, (“Complainant”), Wisconsin, USA. Respondent is MyBizHomepage, Inc., (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mybizhomepage.com> and <mybizdashboard.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.
On April 15, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mybizhomepage.com> and <mybizdashboard.com> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com and firstname.lastname@example.org. Also on April 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be deficient on May 5, 2010 as the file size was over the 10mb limit and the Annexes were not separated from the Response.
On May 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is a leading provider of business solutions for independent consultants, small businesses, contractors and freelancers as well as the organizations that employ contract talent. Among other things, Complainant offers benefit and support services to small business and independent consultants that would typically be provided to employees by their employer’s human resources and bookkeeping staffs. Since 2000, Complainant has used the MYBIZOFFICE trademark for its unique proprietary system designed to provide back-office services to independent contractors. Complainant owns trademark rights in the MYBIZOFFICE trademark. Complainant has invested significant resources to develop and promote the MYBIZOFFICE services. Since 2000, Complainant has sold more than $300 million in the MYBIZOFFICE services. Respondent owns the domain names <mybizhomepage.com> and <mybizdashboard.com>. In February 2009, Complainant contacted Respondent regarding its infringement of the MYBIZOFFICE trademark and requested that Respondent cease all uses of “MYBIZ,” including in the <mybizhomepage.com> domain name and the MYBIZDASHBOARD and MYBIZ HOMPAGE YOUR BUSINESS ALL IN ONE PLACE (the “MYBIZHOMEPAGE application trademarks). In response to the letter, Respondent agreed to cease its uses of the “MYBIZ” within 60 days; however, uses of “MYBIZ” did not stop.
Complainant successfully opposed Respondent’s application for the MYBIZDASHBOARD trademark before the Trademark Trial and Appeal Board. Respondent abandoned its applications following these proceedings. Respondent uses the <mybizhomepage.com> domain name to promote online financial record keeping services for small business nearly identical to services Complainant offers under its MYBIZOFFICE trademark. Respondent has not made any legitimate use of the <mybizdashboard.com> domain name as the website associated with this domain name states it is “Under Construction.” Instead, the domain is used for “Sponsored Listings” and other advertisements for goods sold by third-parties not authorized or related to Complainant.
The disputed domain names and Complainant’s trademark are confusingly similar.
Respondent has no rights or legitimate interests in the domain names. Respondent has not used the domain names in connection with a bona fide offering of goods or services. The proceedings before the Trademark Trial and Appeal Board regarding the MYBIZDASHBOARD application and the Respondent’s abandonment of its MYBIZMOMEPAGE application following Complainant’s objection provide further evidence of Respondent’s lack of a legitimate interest in the domain names.
Respondent knew or should have known about Complainant’s trademark when
Respondent registered the domain names in 2005 and 2008. Complainant has used the
trademarks since 2000 and has a U.S. Registration issued in 2002. Complainant and Respondent are both located
Complainant is in the business of working with contract talent for a variety of back end business services including payroll preparation, benefit summaries, insurance administration and tax payments processing. The Respondent provides a free dashboard directly to small business owners through established channel partners that retrieves data from their QuickBooks file and repositions the data in an easy to read format. Respondent does not offer any of the services offered by the Complainant, nor does the Complainant have the technical capabilities to offer the same services as the Respondent. Respondent’s technology was developed over a two year period, culminating in approval by Intuit’s QuickBooks unit as an approved Developer, and is marketed on the Intuit Marketplace. Complainant and Respondent operate in different market segments with different types of products, aimed at a different user base. Respondent’s proprietary technology took over two years and over $3 million dollars to develop. Respondent is a successful company with many achievements.
Respondent initiated a trademark application, which it subsequently withdrew, not because Respondent did not believe it was correct, but because it had to terminate legal representation due to budget cuts.
Panel finds the Response not to be in compliance with ICANN Rule 5(a) since it
was received with a file size over the 10 mb limit and without the annexes
separated from the response. The Panel
is not required to consider this deficient Response, but will consider the
Response in an effort to consider all information available. See SEMCO Prods,. LLC v. dmg world media (
2. The parties do not offer similar business services on the Internet.
3. The domain names in issue and the Complainant’s trademark are confusingly similar.
4. Complainant fails to prove that Respondent is without rights to or legitimate interests in the disputed domain name <mybizhomepage.com>.
5. Respondent is without rights to and legitimate interests in the domain name <mybizdashboard.com>.
6. Complainant fails to prove that Respondent registered and used the domain name <mybizdashboard.com> in bad faith.
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.
Complainant submits evidence that it owns several trademark registrations with the United States Patent and Trademark Office (“USPTO") for the MYBIZOFFICE mark issued November 5, 2002. Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006).
Complainant argues that Respondent’s <mybizhompage.com> and <mybizdashboard.com> domain names are confusingly similar to its MYBIZOFFICE mark. Complainant contends that Respondent’s use of the “mybiz” portion of Complainant’s mark with the generic terms “homepage” or “dashboard” does not render the disputed domain names distinct from Complainant’s mark. Complainant also notes that the addition of the generic top-level domain (“gTLD”) “com” does not distinguish the disputed domain names from Complainant’s mark. Complainant produces evidence to show that the terms “homepage” and “dashboard” are associated in some ways with the term “office.” The addition of the terms “homepage” and “dashboard” to the disputed domain names does not prevent the domain names from being confusingly similar to Complainant’s mark. See Bank of America Corp. v. Nobuyki Takahashi, FA 197930 (Nat. Arb. Forum Nov. 4, 2003) (finding the domain name <bankofamericahomepage.com> confusingly similar to the BANK OF AMERICA trademark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Columbia Insurance Co. v. Pampered Gourmet, D2004-0649 (WIPO Oct. 18, 2004). An affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis.
Complainant prevails under Policy ¶ 4(a)(i).
Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbra Prods,. Inc. v, Entm’t Commentaries, FA741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant argues that Respondent is not commonly known by the disputed domain names, and Complainant has not granted Respondent permission to use its mark. The WHOIS information for the disputed domain names identifies “Mybizhomepage, Inc.” as the registrant of both disputed domain names. Complainant has submitted evidence to show that it successfully opposed Respondent’s application for the MYBIZDASHBOARD trademark before the Trademark Trial and Appeal Board of the USPTO. Complainant argues that Respondent has since abandoned both the MYBIZDASHBOARD and MYBIZHOMEPAGE trademark applications with the USPTO. For these reasons, it is argued that Respondent is not commonly known by the disputed domain names although it appears from the WHOIS information that Respondent is commonly known by one of the disputed domain names. Respondent attempts to demonstrate its rights to and legitimate interests in the disputed domain names under Policy ¶ 4(c) in the following manner. Respondent contends that Respondent is commonly known by the domain name <mybizhomepage.com>. The evidence shows that Respondent registered the disputed domain name <mybizhomepage.com> in the year 2005 under the registrant name “Mybizhomepage, Inc.” Respondent has operated under the “Mybizhompage, Inc.”, and no other name since 2005. Respondent contends that this factual situation satisfies the requirement of Policy ¶ 4(c)(ii).
Respondent further contends that it is using the disputed domain names in connection with a bona fide offering of goods and services. Respondent shows that it offers free web-based business tools in relation to third-party Intuit Quickbooks, and that Respondent has been endorsed by such for distribution of Respondent’s product on the QuickBooks website. Respondent further submits evidence of endorsements and publications that have acknowledged Respondent’s business and services offered as evidence that Respondent is using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Policy states that before any notice of the dispute, the Respondent’s use of a domain name in connection with a bona fide offering of goods or services is sufficient to demonstrate rights to and legitimate interests. Complainant contends that Respondent’s use is not a bona fide use because Respondent is intentionally trading upon Complainant’s fame to promote Respondent’s interests. Complainant produces no evidence to support this position other than its registered trademark. Complainant does not contend that Respondent does not offer the goods and services Respondent states that it does and the Attachments to the Complaint clearly show that Respondent deals in Quickbooks additions and not the business products offered by Complainant.
Though neither party addresses this issue, the evidence shows that there was no notice of a dispute between the parties in 2005 when Respondent registered the domain name <mybizhomepage>. The notice of the dispute arose years later when Respondent attempted to register the disputed domain names as trademarks with the United States Patent and Trademark Office. Therefore, the evidence shows that for several years prior to the dispute, Respondent made a bona fide offering of goods or services. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W., FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
domain name was registered by Respondent in 2008. The website is being used to display
advertisements linking to third-party websites. Complainant contends that that
Respondent receives click-through fees when Internet users click on any of the
third-party links displayed. The Panel
finds that Respondent’s use of this domain name is not a use in connection with
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Jerry Damson, Inc. v.
The Panel finds that based upon the evidence presented in this case, Complainant has failed to prove that Respondent lacks rights to and legitimate interests in the disputed domain name <mybizhomepage.com> under Policy ¶ 4(a)(ii). The Panel finds that Complainant has proved that Respondent is without rights to or legitimate interests in the domain name <mybizdashboard.com>.
Respondent contends that Complainant and Respondent offer different types of goods and services from each other. Respondent notes that Complainant works with back-end business services including payroll preparation, benefit summaries, and insurance and tax processing, while Respondent contends that it does not offer any of the services offered by Complainant, and that Complainant does not have the technical capabilities to offer the same services as Respondent. Panels have found that in situations such as this where the products offered are different, even when there is an allegedly infringing domain name, the likelihood of confusion is lessened and in some cases can be tolerated under the Policy. See K & N Eng’g, Inc. v. Filter Charger Mfg. Co., FA 105736 (Nat. Arb. Forum Apr. 15, 2002); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002).
Once the determination is made that Respondent has rights to or legitimate interests in the disputed domain name <mybizhomepage.com>, the issue of bad faith is moot and need not be addressed by the Panel. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).
As to the domain name <mybizdashboard.com>, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) because mere assertions of bad faith are insufficient for a complaint to establish Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech, Ltd. FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the domain name in bad faith because mere assertions of bad faith are insufficient); see also Graman USA Inc. v. Shenzhen Graman Indus Co., (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 1, 2010
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