Budget Bicycle Center v. Williamson
Bicycle Works
Claim Number: FA0501000406676
Complainant
is Budget Bicycle Center (“Complainant”), 8 N. Charter St.,
Madison, WI 53715. Respondent is Williamson Bicycle Works
(“Respondent”), represented by Joseph P.
Wright of Stafford Rosenbaum LLP, PO Box 1784, Madison, WI 53703.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <budgetbicyclecenter.com> and <budgetbicycles.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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 20, 2005.
On
February 01, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <budgetbicyclecenter.com> and <budgetbicycles.com> are registered with Network Solutions,
Inc. and that the Respondent is the current registrant of the name. 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
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 21, 2005 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 postmaster@budgetbicyclecenter.com
and postmaster@budgetbicycles.com by e-mail.
A
timely Response was received and determined to be complete on February 21, 2005.
On February 25, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Clive Elliott as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant’s
business is called Budget Bicycle Center.
Complainant asserts that it has conducted business under this name since
1979. It is also asserted that
Complainant and Respondent’s retail locations are within a mile of each other
and they are each others’ primary competitors.
Complainant says the domain name BUDGETBICYCLECENTER.COM and
BUDGETBICYCLES.COM are confusingly similar to BUDGET BICYCLE CENTER.
Complainant
also states that for a period of time Respondent redirected visitors to
BUDGETBICYCLECENTER.COM and BUDGETBICYCLES.COM to its website,
WILLYBIKES.COM. Complainant claims this
was an intentional attempt to attract, for commercial gain, Internet users to
Respondent’s web site by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site.
Complainant
submits that Respondent registered the domain names in order to prevent
Complainant from reflecting the mark in a corresponding domain name.
Complainant asserts that it has been unable to establish a website presence
because of this and is suffering a significant disruption of business as a
result.
B.
Respondent
Respondent
states that he operates a website for his bicycle, fitness, clothing and
accessory business as WILLYBIKES.COM.
Respondent admits that it operates a website for its
business under the domain name WILLYBIKES.COM. Respondent alleges that his use of the domain names in question
was for legitimate commercial use because Respondent thought the domain names
merely describe a class of goods sold by Respondent. It asserts that customers were not misled when the domain names
led them to the Williamson Street Bicycle Works website, because Williamson
Street Bicycle Works is in the business of selling bicycles.
FINDINGS
The panel finds that Complainant has not
proved its case in that while the domain names are confusingly similar to a
mark in which Complainant has rights, it has failed to establish that the use
of the domain names made by Respondent was without legitimate interest and 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 Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(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.
Complainant argues that is has used the BUDGET BICYCLE CENTER mark in
commerce since 1979. The Panel may find
that Complainant has established common law rights in the mark through use in
commerce. See Tuxedos
By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established).
Moreover, under
Policy ¶ 4(a)(i), a complainant need not hold a registered trademark to
establish rights in a mark. Common law
rights are sufficient when a complainant demonstrates secondary meaning
associated with a mark. See McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The
ICANN dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy).
Having said
this, it is necessary to observe that the complaint is almost entirely lacking
in detail as to why the Complainant is entitled to rights in the BUDGET BICYCLE CENTER mark. It annexes a copy of correspondence which
shows its use of the mark and/or name in commerce, but provides little other
supporting information or documents.
Accordingly, while the Panel is prepared to give Complainant the benefit
of the doubt on this issue, it needs to be stressed that the submissions and
evidence filed by the parties were brief and perfunctory at best. One would have expected that in the case of
a mark/name that is clearly highly descriptive, that further evidence or at
least detailed submissions would have been addressed to the issue of not just
secondary significance but whether and how the mark/name has acquired the
necessary distinctiveness. This matter
will be touched on further below.
Complainant
avers that the <budgetbicyclecenter.com> domain name is identical
to Complainant’s BUDGET BICYCLE CENTER mark.
In addition, Complainant contends the <budgetbicycles.com> domain
name is confusingly similar to Complainant’s BUDGET BICYCLE CENTER mark
because, with the exception of the omission of the word “center” and the mere
addition of the letter “s,” the domain name fully incorporates the mark and
merely adds the gTLD “.com.” See Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding
that a domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently similar to the mark to cause a likelihood of confusion among the
users of complainant’s services and those who were to view a website provided
by respondent accessed through the contested domain name); see also Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to complainant's mark, Hammond
Suddards Edge, where the name “Hammond Suddards” identifies complainant
independently of the word “Edge”).
It is found that
the <budgetbicyclecenter.com> domain name is identical or at very
least confusingly similar to Complainant’s BUDGET BICYCLE CENTER mark and that
Complainant thus establishes this ground.
Respondent contends that is has rights and legitimate
interests in the domain names because it has used the domain names to make a
bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (stating that “Respondent is using the domain <groceryoutlet.com>
for a website that links to online resources for groceries and similar goods.
The domain is therefore being used to describe the content of the site,” as evidence
that respondent was making a bona fide offering of goods or services with the
disputed domain name); see also Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO Mar.19, 2002) (finding that respondent’s use of the disputed
domain name to make a bona fide offering of services bestowed rights and
legitimate interests in the domain name).
Furthermore,
Respondent maintains that it has rights and legitimate interests in the <budgetbicyclecenter.com> and <budgetbicycles.com> domain names because the domain names
describe the products offered on the website.
See K2r Produkte AG v. Trigano,
D2000-0622 (WIPO Aug. 23, 2000) (finding that respondent had rights and
legitimate interests in the domain name <k2r.com> where he registered the
domain name for a website in connection with his mother’s store, "KIRK ET
ROSIE RICH"); see also Modern Props, Inc. v. Wallis, FA 152458
(Nat. Arb. Forum June 2, 2003) (finding that respondent’s operation of a bona
fide business of online prop rentals for over two years was evidence that respondent
had rights or legitimate interests in the disputed domain name).
If
the Panel finds that the disputed domain names are comprised of generic terms,
then the Panel may conclude that Respondent has rights or legitimate interests
in the domain names. See SOCCERPLEX,
INC. v. NBA Inc., FA 94361 (Nat.
Arb. Forum May 25, 2000) (finding that complainant failed to show that it
should be granted exclusive use of the domain name <soccerzone.com>, as
it contains two generic terms and is not exclusively associated with its
business)’ see also Successful
Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb.
Forum Mar. 7, 2001) (finding that “seminar” and “success” are generic terms to
which complainant cannot maintain exclusive rights); see also Lucky Money, Inc. v. ilovesschool.com,
FA 96383 (Nat. Arb. Forum Mar. 9, 2001) (finding complainant cannot claim
exclusive common law rights to an expression
- Lucky Money – comprised of generic terms).
It
is of course difficult enough for a panel to make an assessment as to whether a
party’s use of a domain name is legitimate or not. One means of assisting to make that assessment is to take into
account the nature of the mark in question, the level of distinctiveness
inherent in or acquired by that mark, and the plausibility of the excuse
provided by the respondent. In the case
where a mark is highly descriptive and a complainant fails to provide adequate
evidence of secondary meaning and the respondent is able to come up with a
plausible explanation, it may well be that the complainant has to accept that
it may have failed to meet the burden placed upon it under the Policy.
In
the present case, the Panel is of the view that matters are sufficiently evenly
balanced that in the absence of sufficient evidence or factual assertion and
submission that Complainant has failed to satisfy the burden and accordingly
that the ground has not been made out to its satisfaction. That is not to say that Respondent is
necessarily acting legitimately but that Complainant fails to prove its case on
this ground.
Respondent
argues that Complainant has failed to meet its burden in proving bad faith
registration and use because Complainant has failed to point to particular
facts and circumstances supporting its allegations. See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29,
2002) (finding that because complainant failed to provide any factual
allegations as to the nature of use of the disputed domain name, complainant
failed to prove that respondent’s domain names were being used in bad faith); see
also White Pine Software, Inc. v.
Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to
transfer the domain name where a full factual record has not been presented to
the Panel such that a conclusive determination can be made regarding the
parties’ respective claims to the contested domain name); see also Asphalt Research Tech., Inc. v. Anything.com,
D2000-0967 (WIPO Oct. 2, 2000) (finding that complainant has failed to prove
that the domain name <ezstreet.com> was registered and is being used in
bad faith or held passively for use by respondent in bad faith).
If the Panel
finds that Respondent has rights or legitimate interests in the domain names,
the Panel may conclude that Respondent did not register or use the disputed
domain names in bad faith. See Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that respondent did not register or use the
domain name <metagen.com> in bad faith where respondent registered the
domain name in connection with a fair business interest and no likelihood of
confusion was created).
Respondent
contends, with some merit, that the domain names are comprised of generic
terms. If the Panel finds that
Respondent’s domain names are generic, then the Panel may determine that
Respondent has not registered or used the <budgetbicyclecenter.com> and <budgetbicycles.com> domain names in bad faith. See
Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat.
Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to
be generic and that respondent registered and used the domain name in good
faith “because Respondent selected the name in good faith for its web site, and
was offering services under the domain name prior to the initiation of the
dispute”).
Respondent’s
submissions on this ground have some force, given the highly descriptive nature
of the mark and the absence of adequate evidence or submission on the question
of secondary significance/distinctiveness.
Finally, for these reasons and on the basis of the question of burden of
proof, the Panel finds the ground unproven.
Accordingly,
Complainant fails to establish this ground and with it the complaint.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Clive Elliott Panelist
Dated: March 04, 2005
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