national arbitration forum

 

DECISION

 

Bidz.com, Inc. v. Ahmed Mousa

Claim Number: FA1106001393317

 

PARTIES

Complainant is Bidz.com, Inc. (“Complainant”), represented by Lester Winograde, California, USA.  Respondent is Ahmed Mousa (“Respondent”), Kuwait.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bidztv.com>, registered with GoDaddy.com, Inc.

 

PANEL

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

 

Flip Petillion as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2011; the National Arbitration Forum received payment on June 13, 2011.

 

On June 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bidztv.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2011 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@bidztv.com.  Also on June 17, 2011, 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 complete on July 6, 2011.

 

On July 11, 2011, the Forum received an Additional Submission by the Complainant. This Additional Submission was made timely.

 

On July 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant asserts Respondent’s <bidztv.com> domain name is virtually identical or confusingly similar to its BIDZ and BIDZ.COM marks. Complainant further contends that Respondent has no rights or legitimate interests in the domain names.  Finally, Complainant contends that Respondent registered and is using the domain names in bad faith, as Respondent made no active use of the domain name and offered to sell the domain name for $150,000.00.

 

B. Respondent

 

Respondent argues that the disputed domain name was legally registered and that the fact that it has the word ‘bids’ in it – although the disputed domain name does not contain the word ‘bids’, but the term ‘bidz’ instead (note of the Panel) – , is not infringing trademark law. Respondent contends that the disputed domain name is not identical or confusingly similar to Complainant’s marks, because it contains no design or logo similar to the trademark he owns whatsoever that the average person can be confused about.

 

Respondent further contends to have rights and a legitimate interest in the disputed domain name, as he is finalizing designs and business concepts of a website, which Respondent does not want to disclose. Respondent asserts that he would use the word ‘bidz’ in its generic meaning of bidding in a business format. Respondent claims to have no intentions whatsoever to divert consumers from <bidz.com> to his website or to tarnish Complainant’s trademark or service mark. 

 

Finally, Respondent contends that he did not register or use the disputed domain name in bad faith. The fact that Respondent offered to sell the domain name to Complainant was a reaction to the claims of Complainant’s attorney, which Respondent considered to be a form of bullying. 

 

 

C. Additional Submissions

 

Complainant

 

In its additional submission, Complainant argues that whereas ‘bids’ is a plural of a commonly used word, ‘bidz’ is not a generic word, but a completely separate federally registered and protected trademark. The mere addition of the descriptive word or letters ‘tv’ to the trademark does not avoid a finding of confusing similarity according to Complainant.

 

Furthermore, Complainant contends that the mere assertion by Respondent that he is undergoing a process to finalize designs and business concepts of a website for the disputed domain name is insufficient to prove rights or legitimate interest in the domain name. Respondent did not provide the slightest evidence supporting this statement, and even if he did, the mere concept would be insufficient to evidence legitimate rights in the domain name.

 

Finally, Complainant reiterates its argument that Respondent’s offer to sell the domain name for $150,000.00 only strengthens the fact that Respondent has no purpose for squatting on the BIDZ and BIDZ.COM trademarks other than for profit in selling it back to Bidz.

 

Respondent

 

Respondent did not reply to the additional submission of Complainant, but merely asked the Forum whether or not he needed to file an additional submission. As it is at the Respondent’s discretion whether or not to file an additional submission, the Forum did not respond to Respondent’s request.

 

FINDINGS

 

1.    Complainant is the holder of the following trademark registrations:

 

-        U.S. Reg. No. 3,539,426 – BIDZ, registered on December 2, 2008;

-        U.S. Reg. No. 3,548,909 – BIDZ, registered on December 23, 2008;

-        U.S. Reg. No. 3,548,910 – BIDZ, registered on December 23, 2008;

-        U.S. Reg. No. 3,548,911 – BIDZ.COM, registered on December 23, 2008 .

 

2.    Complainant first used its trademarks on June 15, 1999 (trademark registrations Nos. 3,539,426 and 3,548,911) and on February 15, 2007 (trademark registrations Nos. 3,548,909 and 3,548,910).

 

3.    Respondent, Ahmed Mousa, registered the domain name <bidztv.com> on January 25, 2011. 

 

4.    Respondent makes no active use of the domain name.

 

5.    In a reply to Complainant, Respondent offered to sell the disputed domain name to Complainant for $150,000.00.

 

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

 

Complainant submits evidence of its registration of the BIDZ.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,548,911 issued December 23, 2008) and of its registration of various BIDZ marks with the USPTO (Reg. Nos. 3,539,426; 3,548,909 and 3,548,910).  Complainant uses the BIDZ.COM mark in connection with its selling and auctioning of consumer merchandise.  The Panel finds that Complainant’s trademark registration with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).  The Panel may also find that Complainant’s registration of the mark in a jurisdiction outside that of Respondent does not preclude a finding of rights in the mark under Policy ¶ 4(a)(i).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that Respondent’s <bidztv.com> domain name is confusingly similar to Complainant’s own BIDZ.COM mark.  Complainant alleges that the addition of the term “tv” is likely to render the disputed domain name confusingly similar as it is descriptive of Complainant’s business of selling inter alia electronics at its official <bidz.com> domain name.  The Panel finds that Respondent’s disputed domain name, which merely adds a single descriptive term to Complainant’s BIDZ.COM mark, is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). 

 

While Respondent contends that the <bidztv.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.

 

It is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent, such that Respondent must come forward with concrete evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The WHOIS information for the disputed domain name lists the registrant as “Ahmed Mousa.”  Additionally, Complainant argues that it can find no business named “Bidztv” or “Bidztv.com.”  Complainant also argues that there is no evidence of any business actually offering goods or services under the disputed domain name prior to the filing of the Complaint.  Therefore, the Panel concludes that Respondent is not commonly known by the <bidztv.com> domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent registered the disputed domain name on January 25, 2011.  Complainant asserts that since that time, Respondent has made no active use of the disputed domain name. Respondent claims that he is in the process of finalizing the designs and business concepts of the website to which the domain name will be linked. However, Respondent fails to provide even the slightest evidence of preparations to use the disputed domain name. Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).

 

Complainant states that when its attorney contacted Respondent regarding the infringing domain name, Respondent demanded $150,000 from Complainant in exchange for Respondent’s transfer of the domain name.  The Panel finds that Respondent’s offer to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs associated with the domain name is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent demanded $150,000 from Complainant in exchange for Respondent transferring the disputed domain name to Complainant.  Contrary to Respondent’s contention, the disputed domain name is not composed of generic/descriptive terms only, ‘bidz’ not being an existing word. Hence, Respondent is not trying to sell a domain name comprised of dictionary words to interested parties, but tries to sell a domain name that is confusingly similar to a trademark to the holder of the trademark. The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

 

Complainant argues that Respondent’s disputed domain name resolves to an inactive website.  The Panel finds that Respondent’s failure to make active use of the disputed domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <Bidztv.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Flip Petillion, Panelist

Dated: July 28, 2011

 

 

 

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