MBO Partners, Inc. v.
MyBizHomepage, Inc.
Claim Number: FA1004001319466
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@mybizhomepage.com and postmaster@mybizdashboard.com. 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
in
B. Respondent
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.
FINDINGS
1.
The
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.
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.
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)).
The <mybizdashboard.com>
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).
DECISION
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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