Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator
Claim Number: FA0910001287164
Complainant is Bin Shabib & Associates (BSA) LLP (“Complainant”), represented by Jimmy
Haoula, United Arab Emirates.
Respondent is Hebei IT Shanghai ltd c/o Domain
Administrator (“Respondent”), represented by Paul
Raynor Keating, of Renova, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bsa.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he and the other panelists have acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr. as Panel Chair
Diane Thilly Cabell, panelist
Anne M. Wallace, panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.
On October 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <bsa.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 October 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2009 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 firstname.lastname@example.org by e-mail.
A Response was received on October 29, 2009. However, because no hard copy of the Response was received before the Response due date, the Response was not timely and was therefore determined to be deficient under ICANN Rule 5.
An Additional Submission was received from Complainant on November 3, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Response was received from Respondent that was determined to be timely and complete pursuant to Supplemental Rule 7.
On November 5, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., Diane Thilly Cabell and Anne M. Wallace as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name is <bsa.com>. Complainant claims that the three letters, “BSA”, is short form for Bin Shabib & Associates LLP. Complainant claims that it has applied for the registration of BSA as a trademark with the Trade Mark Section before the Ministry of Economy, Govt. of United Arab Emirates under category 42 to cover legal services. Complainant claims BSA has been used since 2007 and is also part of the trade name of the company registered with the Dubai International Financial Centre. Complainant also claims registration of www.bsa.ae at http://aeda.ae/eng/index.php which is the UAE telecommunication regulatory authority domain registration body.
Complainant offers as examples of use its letterhead and all stationeries of Bin Shabib & Associates; the current website of Bin Shabib & Associates; and all of its relations with its clients and service providers and customers using the short form BSA.
Respondent should not be considered as having any rights or legitimate interests in the domain name in that it is using the same domain name as Complainant; it is using the domain name without purpose; and, the website does not provide any specific or determined services. Also, the Respondent is aware of BSA.AE and is aware that he is illegitimately using the domain name since Complainant has notified and warned him to cease using the domain name and to transfer it to Complainant. The Respondent does not have any reason to use BSA since it is not related to the service he is providing or the name of the products he is using. The Respondent has recently changed the Registrant of BSA.com since receiving email from Complainant. Respondent has intentionally registered and intends to sell the domain name to Complainant or any other party for a higher price.
Complainant has no registered trademark. The alleged trademark application does not grant rights recognized under the UDRP. Complainant’s entire claim is based upon a common law mark and the only evidence submitted in support of its claim is a blank piece of stationary and its website. No evidence establishes use of “BSA” as a mark.
“BSA” is in no manner exclusively or primarily associated with Complainant. The letter combination has been used worldwide with a multitude of different meanings. Wikipedia provides a list of over twenty associations using the same letter combination and a Google search results in over 10.4 million references.
Respondent is located in
Respondent acquired <bsa.com> at a publicly announced domain name auction. Respondent paid a substantial amount for the domain name but did not acquire it because of any perceived trademark value. It was acquired because it is a generic and short three-letter domain which is of unlimited use and thus has significant inherent value. Three-letter .com domain names have not been available for new registration for over 10 years and as such, they are exceedingly rare and valuable. On the open market, these names can be worth millions of dollars. Respondent offers to provide purchase details if the amount is of interest to the panel.
Since acquisition, Respondent has used the domain in good faith and for a bona fide purpose, namely as an advertising driven search portal for a wide variety of matters. None of the uses involve or reference Complainant or its business in any manner and no reference has been made to any competitor of Complainant.
Complainant holds no rights in a mark that is identical or confusingly similar to the domain name. Complainant asserts a trademark application but admits that it is still pending. A pending application is no evidence of rights in a mark. In the absence of registration, Complainant must establish a common law trademark to prevail. It has failed miserably to establish any common law right. No evidence of “secondary meaning” has been presented. The “mark” was introduced in November 2007, less than two years ago. The only evidence allegedly submitted by Complainant is as follows:
1 – Registration of bsa.ae.
2 – Blank stationary.
3 – Website at bsa.ae.
4 – Contracts signed with clients. First, no such contracts were provided and there is no evidence as to whether Complainant in fact has any clients who have actually received such contracts or correspondence using the stationary or visited the website. Offers of proof are merely allegations and are not evidence.
To prevail, Complainant must present a prima facie case that Respondent has no rights or legitimate interest in the domain name. This requirement is not satisfied by allegations without supporting evidence.
Respondent has rights and legitimate interest in the domain name. It has registered a portfolio of domain names incorporating common words, generic terms, short terms and useful phrases. These are employed in conjunction with an advertising subscription database, operated by a third party advertising consolidator (Google), to return search results from the database on the basis of Google’s perceived understanding of the contextual relationships between the domain names and search terms for which advertisers have paid subscriptions on a performance basis.
Respondent has used “BSA”, a multiple purpose 3-letter combination, as a general PPC search portal to provide advertising and other content. Absent proof that the results are generated as a result of the trademark value inherent in the domain name, use of a domain PPC is considered a bona fide offering of goods and services.
Respondent’s use is legitimate in all respects. It does not target Complainant and is not being used to provide legal services or any goods or services related thereto. Nothing on the website indicates registration because of any inherent or perceived trademark value and Respondent’s use does not profit from or conflict in any way with the rights asserted by Complainant. Also, Respondents use predates any notice from Complainant.
In light of the fact that the panel has determined the Complainant has failed to establish its rights or legitimate interests in the disputed domain name, the panel has decided to forego the balance of the lengthy response of Respondent regarding rights or legitimate interest and bad faith.
Respondent does assert that the Complaint was brought in bad faith and requests a finding Reverse Domain Name Hijacking. Respondent asserts that there is no justification for allowing Complainant to dash off a clearly deficient complaint at a low cost so as to force the Respondent to incur $5,000 in legal fees and $1,500 in panel fees to defend itself against unsupported allegations such as those made herein.
C. Additional Submissions
The response of Respondent is fatally defective for failure to comply with clause 5(a) of the Supplemental Rules to the Dispute Resolutions Policy in that it exceeds 15 pages. The final signature page of the Response is numbered 16 and incorporates 20 pages of exhibits.
In its reply on the merits, Complainant says that the owner of a trademark is protected from the date of filing of the application and that issuance of a final certificate can take up to 2 years. This administrative delay does not deny or deprive the owner the protection of rights which exist from the date of filing. Complainant filed in November 2007.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent provides no substantive argument or submissions on the issue of why “BSA” is of interest to it or its business. The only argument is that three letter dot com names have not been available for some time and are considered valuable. The letters are not in any way associated with the business of Respondent. The interest of Complainant in the name extends beyond the mere financial interest of the Respondent. The Complainant’s mark is associated with the profession of law not only in the UAE and GCC, but by its clients from many other countries in the world. It is known and used internationally and is being used for the purpose of a licensed law practice since 2001. Complainant’s rights arose prior to Respondent’s registration of the domain name.
Complainant then asserts that, with regard to bad faith, it only need prove “registration” and then “use in bad faith” as opposed to Respondent’s assertions that it must prove “bad faith registration” and “bad faith use”.
In its Supplemental Filing, Complainant advances interpretations that are neither supported nor within the bounds of reasonably extending the prevailing precedent. UDRP permits supplemental filings only upon the request (and at the discretion) of the panel. Respondent generally objects to the continued practice of NAF soliciting, let alone permitting supplemental filings absent a panel request.
However, in this case, Respondent does not object and in fact requests the panel actually consider Complainant’s Supplemental Filing as an example of the continued bad faith of the Complainant.
With regard to Complainant’s objection to the length of Respondent’s Response, UDRP Policy clearly states that any word limitation imposed may apply only to the legal and factual arguments. Measured against the actual standard, the Response does not exceed 15 pages, including the argument in favor of a ruling of Bad Faith and Reverse Domain Name Hijacking against Complainant.
Complainant evidently believes that a trademark application is the same thing as a trademark registration. It argues that its trademark is granted retroactive effect to the date of filing. This argument misses the point. Unless registration actually occurs, there is no retroactive effect because there is no trademark in existence. Complainant admits it has not registered a trademark. Complainant does not allege that is has a common law trademark. A common law mark must show that the public has recognized the asserted mark as an indicator of source. Again, Complainant has only submitted a business card, a copy of what is supposedly a confidential communicate on to one of its clients and a repeated reference to its website. Allegations are not evidence.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name because Complainant’s interest is somehow greater than that of Respondent. The Policy only deals with the Respondent’s rights and legitimate interests. Respondent need not establish a better right or more legitimate interest. Respondent need only show a right or a legitimate interest.
Domains are registered on a first-come-first-served basis. That Respondent had an economic interest in acquiring the domain name is not evidence of bad faith.
Again, because the panel concludes that Complainant has failed to establish trademark or common law rights in the BSA mark, the panel forgoes a recitation of the balance of Respondent’s Supplemental Response.
Preliminary Issue: Deficient Response
Respondent has provided a Response that
was deemed deficient by the National Arbitration Forum because a hard copy of
the Response was not received before the Response deadline. The Panel has decided to consider
Respondent’s submission. See Telstra Corp. v. Chu, D2000-0423
(WIPO June 21, 2000) (finding that any weight to be given to the lateness of
the response is solely in the discretion of the panelist); see Strum
v. Nordic Net
The panel has further decided that Complainant has failed to establish trademark rights in the BSA mark. As a result of this finding, the panel declines to analyze the other two elements of the policy.
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.
The Panel finds that Complainant has failed to establish registered trademark rights or common law rights in the BSA mark. Specifically, Complainant’s use of the BSA mark for less than two years has been too short, and Complainant has not shown any evidence of the sort that is usually used to establish that a mark has acquired secondary meaning. In light of Respondent’s arguments, the Panel finds that Complainant has failed to establish common law rights in the BSA mark pursuant to Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
Having found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
REVERSE DOMAIN NAME HIJACKING:
Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The Rules require the complainant to certify (and Complainant did so certify in this proceeding) that: “the information contained in the Complaint is to the Complainant’s best knowledge complete and accurate, that this Complaint is not being brought for any improper purpose, such as to harass [Respondent]…”
In these proceedings, Respondent contends that Complainant has brought the UDRP claim in bad faith based upon its tenuous common law rights in the BSA mark and the fact that Respondent registered the disputed domain name ten years before Complainant’s alleged use of the mark. Furthermore, Respondent asserts that the Panel should find Reverse Domain Name Hijacking in this proceeding based on the fact that Complainant has certain financial motives connected to acquiring the disputed domain name. Respondent contends that the Policy is not intended for such use. Complainant does not make an argument against Respondent’s request for a finding of reverse domain name hijacking but instead argues that the UDRP claim was brought in good faith, based on its longstanding rights and widespread use of the BSA mark, which it says has acquired sufficient secondary meaning to establish common law rights under Policy ¶ 4(a)(i).
The panel finds that Complainant has failed to present any evidence to support its claimed rights in the disputed domain name. It only provided an application for trademark registration which does not establish any enforceable rights under the UDRP. It did not offer any evidence to support a finding of common law rights in the disputed mark. Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel further finds that Complainant engaged in Reverse Domain Name Hijacking.
Daniel B. Banks, Jr., Panel Chair,
Diane Thilly Cabell, Panelist,
Anne M. Wallace, Panelist.
Dated: November 19, 2009