Building Owners and Managers Association International v. Richard Morrison
Claim Number: FA1802001770636
Complainant is Building Owners and Managers Association International (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Richard Morrison (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bomaeer.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2018; the Forum received payment on February 6, 2018.
On February 6, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <bomaeer.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@bomaeer.com. Also on February 12, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in BOMA and EXPERIENCE EXCHANGE REPORT and alleges that the disputed domain is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an association that represents and promotes the interests of owners and managers of commercial real estate property, which it does by reference to, inter alia, the trademarks BOMA and EXPERIENCE EXCHANGE REPORT;
2. the trademark BOMA has been in use since 1968 and is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,607,754, registered July 24,1990;
3. the trademark EXPERIENCE EXCHANGE REPORT has been in use since 1923 and is registered with the USPTO as Reg. No. 1,547,320, registered July 11, 1989;
4. the disputed domain name was created on January 29, 2009 and resolves to a website which uses the trademarks, copies text and other content from Complainant’s official website at www.boma.com, is linked to that website and adopts a similar look and feel to that site; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registration with a national authority provides evidence of trademark rights.[i] Complainant provides evidence of its USPTO registrations for the trademarks BOMA and EXPERIENCE EXCHANGE REPORT and so the Panel finds that Complainant has trademark rights in those expressions.
In making a comparison of the disputed domain name with the trademarks Complainant is correct in disregarding the non-distinctive gTLD, “.com”.[ii] Complainant then goes on to submit that:
“[t]he Domain Name is confusingly similar to its BOMA and EXPERIENCE EXCHANGE REPORT trademarks. The Domain Name contains all of Complainant’s BOMA mark and the “EER” acronym, which is a commonly-used reference to the EXPERIENCE EXCHANGE REPORT mark.”
Those claims must be unpacked and examined. As a starting point, the Panel notes that there is no evidence of a trademark registration for “EER” accompanying the Complaint. That is so in spite of the fact that on its website Complainant has used the International Trademark Registration symbol, ®, adjacent the letters “EER”.
The Panel does not find the disputed domain name to be confusingly similar to (i) the BOMA mark[iii], or (ii) the EXPERIENCE EXCHANGE REPORT mark, or (iii) the combination of those two marks, BOMA EXPERIENCE EXCHANGE REPORT. The disputed domain name shares no significant degree of either visual or phonetic resemblance of those trademarks individually or when combined.
Next, reduction of the expression “experience exchange report” to “EER” employs a commonly used form of abbreviation, but it does not create an acronym (an acronym being a readily pronounceable term itself). Further, Complainant’s assertion that the abbreviation “EER” is “a commonly used reference to the EXPERIENCE EXCHANGE REPORT mark” rests on (a) the statement that Complainant publishes The BOMA Magazine and the Experience Exchange Report (“Report”) and the submission that the Report “is often referred to as the EER”, and (b), inclusion of screenshots from Complainant’s website which show, for example, the use of “Office EER” and “Industrial EER”.
The Panel observes that the assertion that the Report is often referred to (by others) as the EER is unsubstantiated. The Panel also observes that the website pages are undated and there is no historical web data which might indicate when the abbreviation “EER” was first used. The Panel does note that Complainant’s USPTO registration for EXPERIENCE EXCHANGE REPORT carries with it a first use in commerce claim from 1923, but there is no evidence as to when the abbreviation came into use and so nothing on which the Panel can find support for the claim that the letters “EER” are a known abbreviation of the EXPERIENCE EXCHANGE REPORT mark.
There being no trademark registration for “EER”, no evidence of a common law reputation in those letters, nor any material evidence to support the claim that it is a commonly used reference to the EXPERIENCE EXCHANGE REPORT mark, the Panel has no cause to find the disputed domain name to be confusingly similar to any trademark(s) in which Complainant has rights.
The Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required.[iv]
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bomaeer.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons
Panelist
Dated: March 12, 2018
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
[iii] There being no prima facie case that the term “eer” is somehow generic.
[iv] See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) 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 Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum Jun. 23, 2017) 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).
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