Bailiwick Data Systems, Inc. v Rainforest
Consulting Inc. c/o Domain Administrator
Claim Number: FA0509000567037
Complainant is Bailiwick Data
Systems, Inc. (“Complainant”), 4260 Norex Drive, Chaska, MN 55318. Respondent is Rainforest Consulting Inc. c/o Domain Administrator (“Respondent”),
represented by John Berryhill, 4 West Front Road, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bailiwick.com>,
registered with Enom, Inc..
PANEL
The undersigned certifies that they have acted independently and
impartially. To the best of each
Panelist’s knowledge, no Panelist has any known conflict in serving as Panelist
in this proceeding.
Linda Byrne and Nelson Diaz as Panelists; Richard Hill as Presiding
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 22, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 26, 2005.
On September 23, 2005, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <bailiwick.com>
domain name is registered with Enom, Inc. and that Respondent is the current
registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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 September 30, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 20, 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@bailiwick.com by e-mail.
A timely Response was received and determined to be complete on October
20, 2005.
An Additional Submission by Complainant was received on October 25,
2005, and an Additional Submission by Respondent was received on October 28,
2005. Neither Additional Submission was
timely and in compliance with Supplemental Rule 7. The Panel has nevertheless chosen to consider both
Additional Submissions in its Decision.
On October 27, 2005, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Linda Byrne and Nelson Diaz as Panelists,
and Richard Hill as Presiding Panelist.
RELIEF SOUGHT
Complainant requests that the <bailiwick.com>
domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name <bailiwick.com> is identical to Complainant’s well-known mark, BAILIWICK. It claims common law trademark rights in BAILIWICK since 1995.
Complainant alleges that it is a well-known, firmly-established, and growing business. Currently eighty people are employed by Complainant. Based in Chaska, Minnesota, Complainant has provided information technology (IT) services to hundreds of customers, including several large national retail chains. Complainant conducts business in all fifty states. Complainant’s current website, <bwick.com>, has experienced 360,000 hits over the past six months.
Complainant states that, as a technology-based company, the Internet is a vital component of its business. Customers and the general public have been confused to find that Complainant does not use the domain name <bailiwick.com>.
According to Complainant, Respondent has no rights or legitimate interests in respect of the <bailiwick.com> domain name. Respondent’s corporate name, Rainforest Consulting, does not include the word “bailiwick,” and Respondent is not commonly known as “bailiwick” by customers or the general public. Complainant also notes that Respondent does not use a logo or trademark bearing the name “bailiwick.” A Google search for “rainforest consulting” and “bailiwick” yields no results.
Complainant alleges that Respondent receives click-through referral fees for diverting Internet users to third-party commercial websites. According to Complainant, Respondent has used the <bailiwick.com> domain name to direct Internet users to a web site that displays a generic search engine, links to commercial websites, and pay-per-click search results. Internet browsers are given links to topics related to “bail” and “wicks” and random businesses that may include “bailiwick” as part of their name. At this website, a series of pop-up advertisements are displayed to promote a variety of goods and services. Respondent receives click-through referral fees for diverting Internet users to these third-party commercial websites and pop-up advertisements.
B. Respondent
The Respondent alleges that this dispute concerns an attempt to utilize
the Policy for the purpose of disrupting the plans of a legitimate small
business which has been operating under the name “Bailiwick Manors” since
1999. The Respondent argues that the
“Bailiwick Manors” entity has reserved the domain name for its use in
connection with antiques.
Respondent notes that Complainant’s application for the mark BAILIWICK
has not yet been processed by the U.S. Patent and Trademark Office, so
Complainant cannot claim that it has registered the BAILIWICK trademark. Further, Respondent notes that “bailiwick”
is a common term, which the U.S. Patent and Trademark Office may decide not to
register.
Respondent argues that, even assuming that Complainant has rights in
the mark BAILIWICK in connection with information technology consulting
services, Complainant does not therefore earn a monopoly in the dictionary
word, which is suitable for use in connection with the businesses of other
entities.
According to Respondent, its legitimate interests in the contested
domain name arise from its use of the domain name in connection with a business
named Bailiwick Manors, which has existed for several years. Respondent also notes that the <bailiwick.com> domain name has
been used as part of an e-mail address.
Respondent admits that it has not used the disputed domain name to
point to a web site, but points out that there is no requirement that a domain
name be used in connection with a web page.
Domain names have a variety of uses, of which a web site address is
merely one.
Regarding the element of bad faith, Respondent alleges that Complainant
provides no proof that Respondent’s domain name registration was motivated by
any bad intent with respect to Complainant.
The Respondent has owned the domain name for several years, yet there is
no evidence that Respondent has sought to sell the domain name to Complainant,
nor any evidence Respondent has sought to pass itself off as Complainant.
Finally, Respondent alleges that Complainant has engaged in Reverse Domain Name Hijacking, because it did not perform a “minimal standard of due inquiry” before filing the Complaint. Respondent asserts that there was “no pre-dispute correspondence,” which should have preceded the filing of the Complaint.
C. Additional Submissions
Complainant explained that its reason for bringing the Complaint is
that, “Complainant’s customers and vendors who vary from Fortune 500 companies
to sole proprietorships try to visit our website by going to bailiwick.com and
there they are confused by not finding us there.”
Concerning the allegation that the word “bailiwick” is a common term, Complainant states: “As for the word Bailiwick, itself, we understand that it is in the dictionary, although the use of the word is fairly obscure. So much so that we felt the need to define the word on our website because so few people know what it means.”
Concerning Respondent’s claim that it operates a business named “Bailiwick Manors,” Complainant notes that, “Respondent never put so much as a logo, phone number or e-mail address on said domain.” Complainant alleges that no business called “Bailiwick Manors” is registered in either Georgia or Tennessee and states that “records of 3 e-mails from the last 5 years hardly constitute a business, more of a hobby.”
Complainant stated in its Additional Submission that it was in communication with Respondent several years before filing its Complaint. When Complainant inquired about the <bailiwick.com> domain name, Respondent simply replied that “The domain is not for sale.” Complainant states that Respondent never mentioned having a business related to the domain name.
Concerning the issue of bad faith use and registration, Complainant states that Respondent continues to use the domain to generate paid search results, and that Respondent’s website has sometimes linked to competitors of Complainant. At times, Respondent’s website links to competitors of Complainant, which demonstrates that Respondent has used the domain in bad faith.
The Complainant states that it has
contacted a former employee, John Devereaux, in connection with this
matter. In 2000, Mr. Devereaux had
spoken by telephone with Mr. Bond (the principal of Rainforest Consulting)
about the availability of the domain <bailiwick.com>. At that time a price was quoted at $6,000 to
$7,000, which was more than Complainant could afford at the time. During that conversation, no mention was
made of “Bailiwick Manors.”
Respondent alleges that Complainant had not provided evidence to show
its ownership of a trade or service mark at the time that Respondent registered
the domain name <bailiwick.com>
on May 9, 2000.
Respondent disputes Complainant’s allegations that no business named
“Bailiwick Manors” is registered in Georgia or Tennessee. Respondent attached a record of a 1998
fictitious business name filing for “Bailiwick Manors,” owned by “B.E. Wood.” Respondent also attached a Georgia Notice of
Proposed Assessment form addressed to “Wanda B. Wood D/B/A Bailiwick Manors,”
dated June 15, 2001.
Respondent alleges that the registration and use of <bailiwick.com> were in good
faith, in light of the business “Bailiwick Manors”. Further, Respondent notes that Complainant’s allegation of a
purported offer to sell the disputed domain name is based only on hearsay. Further, states Respondent, “having
registered the domain name for a legitimate purpose in connection with
Bailiwick Manors, Respondent is perfectly entitled to dispose of this asset in
any manner Respondent sees fit.”
FINDINGS
The Complainant has common law trademark rights in the name BAILIWICK and BAILIWICK DATA SYSTEMS since at least 1995. The term “BAILIWICK” is used prominently on Complainant’s web site. Complainant’s website is used to manage client-specific project information, and to promote Complainant’s services, provide information to job-seekers, and recruit business partnerships.
Complainant filed a U.S. trademark application for BAILIWICK on August 11, 2005 (Serial Number 78-690,907). The trademark application claims that Complainant first began to use the BAILIWICK trademark for “information technology project management services” on April 10, 1995. The Complainant incorporated in February of 1995, under the corporate name Bailiwick Data Systems, Inc. The Complainant is in the business of providing information technology consulting services.
The word “bailiwick” is a common term found in the dictionary. However, Complainant owns valid common law rights in the BAILIWICK trademark by virtue of its use of the trademark for ten years. The Respondent presented no evidence that “bailiwick” is a common, merely descriptive term in the area of IT project management. It is very common for valid, enforceable trademarks to appear in a dictionary (e.g., APPLE computers). In this situation, the majority of the Panel concludes that the BAILIWICK mark is entitled to relatively broad protection because it is a strong, distinctive mark in conjunction with IT services.
The Respondent registered the contested
domain name in 2000 and has been using it to direct Internet users to a
click-through search site. The
Respondent receives revenue for those searches and referrals. The referred sites include various sites
containing the word “bailiwick,” for example a Bailiwick Theater, and unrelated
sites for items such as used cars and dating services.
DISCUSSION
The
first issue to be decided by this Panel is a procedural issue, namely whether
or not to admit and consider Complainant’s and Respondent’s procedurally
deficient Additional Submissions sent on October 25, 2005 and October 28, 2005
respectively. The Panel has
decided to admit these Additional Submissions and to consider them in its
Decision, on the basis of Rule 10 (a), (b) and (c); and Rule 12. A
precedent can be found in Univ.
of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000).
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 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;
(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 owns valid common law trademark rights in the term
BAILIWICK by virtue of its use of BAILIWICK during the past ten years. The BAILIWICK term is used prominently on
Complainant’s website, and the “Bailiwick” company name is used on
Complainant’s communications with its customers. See British Broad. Corp. v. Renteria, D2000-0050
(WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between
registered and unregistered trademarks and service marks in the context of
abusive registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000)
(finding that the complainant has common law rights in BROADCASTAMERICA.COM,
given extensive use of that mark to identify the complainant as the source of
broadcast services over the Internet, and evidence that there is wide
recognition with the BROADCASTAMERICA.COM mark among Internet users as to the
source of broadcast services); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”).
Moreover, the <bailiwick.com> domain name is confusingly similar to Complainant’s common law mark BAILIWICK. Respondent’s <bailiwick.com> domain name is identical to Complainant’s BAILIWICK mark, and the domain name incorporates the mark in its entirety. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Once Complainant
makes a prima facie case to establish
that Respondent has no rights or legitimate interests, then the burden of proof
shifts to Respondent to prove that it owns rights or legitimate interests in
the domain name <bailiwick.com >.
This Panel concludes that Complainant made a prima facie case with its argument that Respondent is not commonly
known by the <bailiwick.com >
domain name, and the argument that Respondent, by using a confusingly
similar name, does not demonstrate rights or legitimate interests in the domain
name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name, it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
In this case, Respondent is Rainforest Consulting, not Wanda Bailey Bond. In defending against the Complaint, there is no assertion that Rainforest Consulting has used the term “Bailiwick” for the bona fide offering of goods, or that Rainforest Consulting is commonly known under the name “Bailiwick.” The Respondent argues only that Wanda Bailey Bond, the wife of Rainforest’s principal, has such rights. However, Wanda Bailey Bond is evidently not affiliated with or employed by Rainforest Consulting. Any rights that Wanda Bailey Bond may have do not inure to Rainforest Consulting.
There is no evidence that Rainforest Consulting has any rights or legitimate interest in the domain name. Rainforest Consulting is not commonly known by the name “Bailiwick.” Despite the fact that the <bailiwick.com> domain name was created on May 9, 2000, Rainforest Consulting does not present evidence of any use or demonstrable plans to use this domain name in any way other than for a click-through redirection site. Respondent’s <bailiwick.com> domain name resolves to a web site that contains links to a wide variety of sites, such as “Bailiwick Theatre,” “Tickets,” “Collectibles,” “Used Cars,” “Dating,” etc. No evidence has been presented that any of these links is affiliated with a business affiliated with Rainforest Consulting.
It is well-settled
that operating this type of website does not confer upon Respondent any rights
or legitimate interests in the <bailiwick.com>
domain name. The use of another’s mark to create a directory service of various
goods and services is not a bona
fide offering of goods and
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb.
Forum May 12, 2003) (finding that the respondent did not have rights or
legitimate interests in a domain name that used the complainant’s mark and
redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements).
The Response asserts that Wanda Bailey Bond has been operating under the name “Bailiwick Manors” since 1999, and that the <bailiwick.com> domain name was reserved for her business in 2000. The Response states that the domain name has been used “in connection with a business named Bailiwick Manors, which Respondent has operated for several years and for which Respondent has used the domain name as an email address.” This business relates to “landscaping and gardening consultation and installation,” and/or antiques.
To substantiate its use of the term “Bailiwick” for these activities, Respondent has submitted no advertisements, telephone listings, brochures, labels, packaging, website printouts, business stationery, invoices, letters, proposals, signage, etc. that would demonstrate use of the term “Bailiwick” as the name of an ongoing business.
The Response argues that the wife of Rainforest Consulting’s principal used the term “Bailiwick” in the following ways: on a state fictitious business name filing dated October 1, 1998; on a business card from the 1990s, on an invoice from a subcontractor and check from 2000, for a stall at an antiques market from 2000, on e-mails using the e-mail address bailey@bailiwick.com, on 2001 and 2003 tax returns containing the “dba” name Bailiwick Manors, and on invoices to “Bailiwick Manor” from 2000. However, each of these activities is isolated in time and shows merely an internal use of “Bailiwick,” without any use of “Bailiwick” with respect to the public at large. In addition, each of these items relates to the activities of Wanda Bailey Bond, not of Rainforest Consulting.
Despite Respondent’s arguments that the wife
of the principal or registrant is commonly known by the disputed domain name,
the majority of the Panel finds this to be insufficient to establish rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See Cricket Techs., L.L.C. v. Martin,
FA 311353 (Nat. Arb. Forum Sept. 27, 2004) (“Although Respondent is listed as
the Administrative contact in the WHOIS domain name registration information,
nothing suggests that Respondent is commonly known by the
<crickettechnologies.com> domain name pursuant to Policy ¶ 4(c)(ii).”); see
also Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb.
Forum Sept. 30, 2003) (“While
Respondent may have held itself out as TARGETPILLS.COM on its website at
<targetpills.com>, there is no evidence that Respondent was actually or
commonly known by the disputed domain name.
Both the fact that Respondent declined to respond to Complainant’s
charge and the fact that Respondent’s operations suddenly ceased suggest that
Respondent was not legitimately known as <targetpills.com>.”).
Further, Respondent does not prove its rights or legitimate interest in the domain name by establishing Respondent’s intention to use the domain name in the future. Respondent has not presented any concrete evidence to support future marketing plans, such as contacts, business plans, draft promotional materials, etc. See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).
It appears that Respondent’s use of <bailiwick.com > diverts Internet users who are interested in Complainant’s services. Respondent’s use of <bailiwick.com > permits Respondent to benefit from the goodwill surrounding Complainant’s mark by attracting users to Respondent’s website. This type of activity does not constitute use 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).
Some cases hold
that the use of a generic word in a domain name may constitute legitimate use
of the domain name. See, e.g., Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat.
Arb. Forum Mar. 20, 2000) (finding that the respondent has rights and
legitimate interests in the domain name where the complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark); and Energy Source Inc. v. Your Energy Source, FA
96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights
and legitimate interests in the domain name where “Respondent has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively associated with Complainant’s business”).
However, the foregoing cases do not apply in this
situation. Under U.S. trademark law, a
term is generic only if it is the common name of the company’s goods or
services. In this situation, BAILIWICK
is not generic with respect to information technology project management
services. Rather, the BAILIWICK mark
constitutes a distinctive mark in view of its secondary meaning and/or
suggestive nature.
Trademarks can generally be classified into four
basic categories: (i) generic, (ii)
descriptive, (iii) suggestive, and (iv) arbitrary. A generic trademark is a word that has come to be used by
everyone speaking the English language to describe not the brand of service,
but rather the whole class of services.
In other words, if a company provides carryout food services, it should
not use the generic term “restaurant” or “carryout” and expect to be able to
prevent others from using its “trademark.”
The strength of descriptive trademarks may be
enhanced by establishing “secondary meaning,” which indicates consumer
awareness of the trademark as an indication of source. The term “secondary meaning” means that a
trademark is made up of a word that might be interpreted as merely descriptive,
but because it has been used as a trademark for such a long time by a particular
company, the public has come to associate that particular mark with the company
in spite of its descriptive quality. In
this situation, Complainant’s prominent use of the BAILIWICK mark and company
name for ten years establishes the mark’s secondary meaning. In addition, the suggestive nature of
BAILIWICK with respect to Complainant’s services further substantiates the
suggestive nature of this term in that “Bailiwick” conveys that IT consulting
is Complainant’s specialty.
In view of the above, the majority of the Panel concludes that Respondent, Rainforest Consulting, has no legitimate rights or interests in the domain name <bailiwick.com>.
Complainant alleges that the <bailiwick.com> domain name leads
Internet users to a directory service containing links to a wide variety of
goods and services. Complainant argues
that Respondent earns revenue from click-through fees, and Respondent does not
dispute this argument. It appears that
Respondent’s domain name creates consumer confusion for commercial gain, which
constitutes bad faith registration and use pursuant to Policy ¶ 4(v)(iv). See Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of
an infringing domain name to redirect Internet users to banner advertisements
constituted bad faith use of the domain name); see also Mars, Inc. v. Double Down Magazine,
D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent linked the domain name <marssmusic.com>, which is
identical to the complainant’s mark, to a gambling website).
In view of the similarity between the parties’ marks and services, the majority of this Panel concludes that Respondent is using the <bailiwick.com> domain name to divert Internet users searching for Complainant’s services to Respondent’s website. Furthermore, it appears that Respondent is attempting to benefit from the goodwill associated with Complainant’s BAILIWICK mark. Respondent’s practice of diversion, motivated by commercial gain, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).
Moreover, it appears that Respondent, Rainforest Consulting, has been
passively holding the domain name since it has not been used to promote any
type of business for the past five years. See Household Int’l, Inc.
v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that
the respondent’s “vague and unsupported assertion of ‘plans to sell household
goods, supplies and appliances over the Internet’” was insufficient to be
considered proof of a legitimate business plan); see also Open Sys.
Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
that the respondent did not establish rights and legitimate interests in the
domain name where the respondent mentioned that it had a business plan for the
domain name at the time of registration but did not furnish any evidence in
support of this claim). This passive holding is also evidence of bad
faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing
domain name without active use can constitute use in bad faith); see also
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding
that the respondent made no use of the domain name or website that connects
with the domain name, and that passive holding of a domain name permits an
inference of registration and use in bad faith).
In view of the above, the majority opinion of
the Panel is that Complainant has satisfied its burden of proving the bad faith
element of the Policy.
DECISION
For the reasons set forth above, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <bailiwick.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda Byrne, Panelist
Nelson Diaz, Panelist
Dated:
November 9, 2005
Bailiwick Data Systems, Inc. v Rainforest
Consulting Inc. c/o Domain Administrator
Claim Number: FA0509000567037
A. Complainant
Complainant alleges that the disputed domain name <bailiwick.com> is identical to Complainant’s well-known mark, BAILIWICK. It claims common law trademark rights in BAILIWICK since 1995 and has filed a registration request in 2005. The Complainant is a Minnesota corporation incorporated in February of 1995, whose full name is Bailiwick Data Systems, Inc. The Complainant’s principal business is the deployment of information technology solutions.
Complainant alleges that it is a well-known, firmly-established, and growing business. Currently eighty full-time people are employed by Complainant. Based in Chaska, Minnesota, Complainant has provided networking services to hundreds of customers, including several large national retail chains. Complainant works with dozens of multi-site corporations who have locations across the United States including well-known retailers. Complainant has done business in all fifty states.
Complaint states that, as a technology-based company, the Internet is a vital component of Complainant’s business. Despite the fact that customers and the general public have been confused to find that Complainant does not use the domain name <bailiwick.com>, Complainant’s current website, <www.bwick.com>, has nevertheless experienced 360,000 hits over the past six months. Complainant has carefully developed and maintained its website, which is used to manage client specific project information as well as to promote Complainant’s services to existing and potential customers, to provide information to job-seekers and to recruit business partnerships.
According to Complainant, Respondent has no rights or legitimate interests in respect of the domain that is the subject of the complaint. Rainforest Consulting, Inc. (“Respondent”)’s corporate name does not include the word “bailiwick,” Respondent is not commonly known as “bailiwick” by customers or the general public, and Respondent does not use a logo or trademark bearing the name “bailiwick.” A Google search for “rainforest consulting” and “bailiwick” yields no results. Complainant is aware of no other entities related to Respondent which operate under the name “Bailiwick,” or under any similar name.
Complainant alleges that Respondent
receives click-through referral fees for diverting Internet users to
third-party commercial websites. It is
well-settled that operating this type of website does not confer upon Respondent
any rights or legitimate interests in the <bailiwick.com>
domain name. See Pioneer
Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003)
(finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements).
According to Complainant,
Respondent registered and used the confusingly similar domain name in bad
faith. Since that time Respondent has
used the disputed domain name to catch random seekers of the word “bailiwick”
and direct them to a website that displays a generic search engine, links to
commercial websites, and pay-per-click search results. Internet browsers are given links to topics
related to “bail” and “wicks” and any random business that has “bailiwick” in
the name. At this website, Internet
users are subjected to a series of pop-up advertisements for a variety of goods
and services. Respondent apparently
operates a revenue program by which domain holders who redirect Internet users
to the <information.com> domain name are eligible for a referral fee for
searches and pop-up advertisements.
Respondent receives click-through referral fees for diverting Internet
users to third-party commercial websites and pop-up advertisements. This supports a finding that Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv).
B. Respondent
The Respondent alleges that this dispute concerns an attempt to utilize
the Policy for the purpose of disrupting the plans of a legitimate small
business which has been operating under the name “Bailiwick Manors” since 1999,
and which has reserved the domain name for its use in connection with antiques.
Respondent notes that Complainant’s application for the mark BAILIWICK
has not yet been processed, so it cannot claim registered trademark
rights. Further, Respondent notes that
“bailiwick” is a common term, and thus it may prove difficult to register it as
a trademark.
Further, states Respondent, whether Complainant may have rights in the
mark BAILIWICK in connection with information technology consulting services
does not, of course, confer to Complainant a monopoly in the dictionary word,
which is suitable for use in connection with other goods and services by other
parties.
According to Respondent, its legitimate rights and interest in the
contested domain name arise from its operation of the domain name in connection
with a business named Bailiwick Manors, which Respondent has operated for
several years and for which Respondent has used the domain name as an E-Mail
address.
Further, states Respondent, it has used and continues to use the
disputed domain name to conduct business via E-Mail addresses using the
disputed domain name. Respondent admits
that it has not used the disputed domain name to point to a web site, but
points out that there is no requirement that a domain name be used in
connection with a web page. Domain
names have a variety of uses, of which a web site address is merely one. Accordingly, while Respondent has been using
the domain name for E-Mail, web page inquiries have been directed to a “pay per
click” parking page, which indeed returns search results based upon the generic
meaning of the term “bailiwick” and the constituent terms “bail” and
“wick”. There is nothing at all
illegitimate in the use of a domain name as an E-Mail address while its use as
a web page address resolves to a parking page.
Regarding the element of bad faith, Respondent alleges that Complainant
provides no reason whatsoever for Respondent’s registration to have been
motivated by knowledge of, or an intent directed toward, Complainant. The Respondent has had the domain name for
several years, and there is no evidence that Respondent has sought to sell the
domain name to Complainant, no evidence Respondent has sought to pass itself
off as Complainant, and no evidence that Respondent’s registration and use of
the domain name was motivated by an animus toward Complainant.
Further, states Respondent, registering a common word for the purposes of providing paid links via a web search site is not a violation of the Policy, since such a registration is not motivated by ill-intent directed toward a trademark owner. In support, Respondent cites several precedents, for example Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) in which it is stated “Complainant alleges that Respondent derives revenue from its site when users click on the links. If this allegation were substantiated, it would support a finding of a legitimate right or interest in the domain, not bad faith”.
Finally, Respondent alleges that
Complainant has engaged in Reverse Domain Name Hijacking, because it did not
conform to a minimal standard of due inquiry before filing the Complaint. Prior to filing a Complaint against a domain
name registered for over five years, and asserting a trademark application
filed a few weeks ago for the purpose of bolstering a Complaint under the
Policy, Complainant should, according to Respondent, have engaged in
correspondence with Respondent, which it did not do.
C. Additional Submissions
Concerning the allegation that the word “bailiwick” is a common term, Complainant states: “as for the word Bailiwick, itself, we understand that it is in the dictionary, although the use of the word is fairly obscure. So much so that we felt the need to define the word on our website because so few people know what it means.”
Concerning Respondent’s claim that it operates a business named “Bailiwick Manors”, Complainant alleges that no such business is registered in either Georgia or Tennessee and expresses doubts about the reality of that business.
According to Complainant, in communication with
Respondent over the last few years, when Complainant inquired about domain in
question, all Respondent would respond would be “The domain is not for
sale.” Respondent never mentioned
having a business related to the domain name.
The assumption was also understandable being Respondent is a
self-proclaimed “‘old’ domain chaser”
Concerning the issue of bad faith use and registration, Complainant states that Respondent continues to use the domain as they always have, with paid search results. In fact, Respondent’s website has linked to competitors of Complainant at one time or another, and it alleges that in the past the site at the disputed domain name showed a link to “Point of Sales” which is a large part of Complainant’s business. By linking to competitors of Complainant, it shows that Respondent has used the domain in bad faith.
In addition, Complainant states
that it has contacted a former employee, John Devereaux, who spoke to Mr. Bond
(a representative of Respondent) in 2000 about the availability of the domain <bailiwick.com>. At that time a price was quoted at $6,000 to
$7,000, which was more than Complainant could afford at the time.
Respondent alleges that Complainant has not provided evidence to show
possession of a trade or service mark when Respondent registered the domain
name.
Respondent disputes Complainant’s allegations that no business named
“Bailiwick Manors” is registered in Georgia or Tennessee and provides evidence
of registration in Georgia and of business operations in both Georgia and
Tennessee.
Regarding the issue of bad faith registration and use, Respondent
alleges that the registration and use were made in good faith, in light of the
existing business “Bailiwick Manors.”
Further, Respondent notes that Complainant’s allegation of a purported
offer to sell the disputed domain name is based only on hearsay, not backed by
evidence. Further, states Respondent,
“having registered the domain name for a legitimate purpose in connection with
Bailiwick Manors, Respondent is perfectly entitled to dispose of this asset in
any manner Respondent sees fit.”
FINDINGS
The Complainant has common law trademark rights in the name BAILIWICK
DATA SYSTEMS since at least 1995.
The word “bailiwick” is a common term.
The Respondent registered the contested
domain name in 2000 and has been using it, inter alia, to direct
Internet users to a click-through search site, and to receive revenue for those
searches and referrals. The referred
sites include various sites containing the word “bailiwick”, for example a
Bailiwick Theater.
DISCUSSION
The
first issue to be decided by this Panel is a procedural issue, namely whether
or not to admit Respondent’s procedurally deficient Additional Submission sent
on October 28, 2005. Contrary to what
the majority states, Complainant’s Additional Submission was timely and in
compliance with the Supplemental Rules.
The minority concurs with the majority’s decision to admit
Respondent’s Additional Submission and to consider it in its Decision, on the
basis of Rule 10 (a), (b) and (c); and Rule 12. A precedent can be found in Univ. of Alberta v. Katz, D2000-0378
(WIPO June 22, 2000).
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 Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(4)
the domain name
registered by Respondent is identical or confusingly similar to a trademark or
service mark in which Complainant has rights;
(5)
Respondent has
no rights or legitimate interests in respect of the domain name; and
(6)
the domain name
has been registered and is being used in bad faith.
The minority holds that the disputed domain name is confusingly similar to Complainant’s common law mark BAILIWICK DATA SYSTEMS. It cites in support Molecular Nutrition, Inc. v. Network News and Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”).
However, the
minority notes that Complainant has not established that its mark is famous,
and the minority holds that it is clear that Complainant does not have any
exclusive rights to the use of the common word “bailiwick”.
Respondent states that it is using the
disputed domain name for a number of purposes, including provision of referrals
via a search site. Respondent states
that there is nothing at all illegitimate in the use of a domain name as an e-mail
address while its use as a web page address resolves to a parking page, in
particular the search site in question.
Given the generic nature of the disputed
domain name (“bailiwick”), the minority agrees, and cites in support Canned
Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001)
where the Panel held that, where the domain name is comprised of a generic
term, it is difficult to conclude that there was a deliberate attempt to
confuse on behalf of the respondent, and stating that “[i]t is precisely
because generic words are incapable of distinguishing one provider from another
that trademark protection is denied them.”
See also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682
(Nat. Arb. Forum Mar. 20, 2000) (finding that the respondent has rights and
legitimate interests in the domain name where the complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark); Energy Source Inc. v. Your Energy Source, FA 96364
(Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and
legitimate interests in the domain name where “Respondent has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively associated with Complainant’s business”).
As the Panel stated in Manchester
Airport PLC v. Club Club Limited, D
2000-0638 (WIPO August 22, 2000):
… selling a domain
name is not per se prohibited by the ICANN Policy (nor is it illegal or
even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the
ICANN Policy only if the other elements of the ICANN Policy are also
violated, namely trademark infringement and lack of legitimate interest.
A fortiori, use of a domain name to direct users to a search engine offering
advertising and/or paid referral links is part of the capitalist system, absent
other factors. But no other factors are
evident in this case, so the use made by Respondent of the contested domain
name cannot be considered to be illegitimate or in bad faith. Indeed, as Respondent correctly states,
“having registered the domain name for a legitimate purpose in connection with
Bailiwick Manors, Respondent is perfectly entitled to dispose of this asset in
any manner Respondent sees fit.”
The minority holds that Complainant has
failed to satisfy its burden of proving this element of the Policy.
Given that Respondent has legitimate rights
and interest in the disputed domain name, its registration and use is not in
bad faith. See Lee
Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb.
Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was
no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also
Pensacola Christian Coll.
v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has
found that Respondent has rights and interests in respect of [sic] the domain
name at issue, there is no need to decide the issue of bad faith.”).
The minority holds that Complainant has
failed to satisfy its burden of proving this element of the Policy.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to
attempt to deprive a registered domain-name holder of a domain name.
The general conditions for a finding of bad faith on the part of Complainant are well stated in Smart Design LLC v. Carolyn Hughes D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express D2000-0565 (WIPO, July 17, 2000).
Complainant clearly indicates in its Complaint that is was aware of Respondent’s use of the common term “bailiwick” to provide web-based search and referral services. As noted above, such use of common words as domain names is in no way contrary to the Policy, absent other considerations. Complainant’s business is not famous, nor could it possibly claim exclusive rights to use of the word “bailiwick” in Internet domain names.
The case it cites in support of its Complaint, Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003), involves a very well known mark for agricultural products, used in connection with the word “seed” (the contested domain name was <pioneerseed.com>) and thus must be distinguished from the present case, which involves only a mark that is not famous and that is not used in connection with any particular product category.
Thus, Complainant should have been aware at the outset that its Complaint must fail.
Further, after Respondent stressed that it had rights and legitimate interests in the contested domain name in its Response, Complainant persisted by filing an additional submission, in which submission it made allegations concerning Respondent’s good faith, allegations which have been refuted by Respondent.
The minority holds that filing the Complaint in the face of clear knowledge that Respondent had legitimate rights and interests in the disputed domain name, and persisting in the action by filing an additional submission, constitutes an improper action, and harassment, which amount to Reverse Domain Name Hijacking.
MINORITY DECISION
For the reasons set forth above, the minority would conclude that
relief should be DENIED. It is
the minority’s opinion that the Complaint should be dismissed.
The minority concludes that Complainant has engaged in Reverse
Domain Name Hijacking.
Richard Hill, Presiding Panelist
Dated:
November 9, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum