B2BWorks, Inc. v Venture Direct Worldwide, Inc.
Claim Number: FA0104000097119
The Complainant is B2BWorks, Inc., Chicago, IL, USA ("Complainant") represented by Joseph F. Schmidt, of Laff, Whitesel & Saret, Ltd. The Respondent is Venture Direct Worldwide, Inc., New York, NY, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <b2badworks.com>, <b2bmediaworks.com>, <b2badswork.com>, and <b2badwork.com>, registered with Network Solutions, Inc.
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.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 30, 2001; the Forum received a hard copy of the Complaint on May 2, 2001.
On May 02, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <b2badworks.com>, <b2bmediaworks.com>, <b2badswork.com>, and <b2badwork.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 May 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 2001 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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on May 22, 2001.
On May 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges that Respondent has registered four domain names, <b2adworks.com>, <b2mediaworks.com>, <b2adswork.com> and <b2adwork.com>, the domain names at issue, which are identical or confusingly similar to Complainant’s registered trademark, "B2BWORKS." Further, Respondent is not commonly known by a name similar to any of the domain names at issue asserts Complainant. Respondent uses two of the websites associated with the domain names at issue to point to Respondent’s competing website, while the other two associated websites are under construction, and that indicates that Respondent has no rights or legitimate interests in respect of the domain names at issue. Finally, Complainant argues, since Complainant was a vendor to Respondent at times relevant to the registration of the domain names at issue, the parties knew each other well and were aware of their respective Internet presence. Respondent registered at least one of the domain names at issue with actual knowledge of Complainant’s conflicting trademark rights alleges Complainant. Further, following telephone discussions between the parties and according to Complainant, Respondent demanded valuable consideration significantly in excess of documented out-of-pocket costs directly related the domain names at issue. This conduct demonstrates Respondent’s bad faith says Complainant.
Respondent claims that it is much larger and much more sophisticated in the advertising and Internet business than Complainant, and is not aware of any business conducted between the parties during relevant times (but does not deny such business). Respondent denies that the domain names at issue are identical or confusingly similar to Complainant’s trademark. Respondent asserts that it has legitimate interests in respect of the domain names at issue and denies Complainant’s allegations of bad faith.
B2BWorks is a full-service, on-line marketing and services company serving the business to business marketplace. B2BWorks was formed in 1999 and is headquartered in Chicago with offices in New York, Boston and San Francisco. B2BWorks has used the service mark and name B2BWorks since at least as early as January 1999. B2BWorks has applied for and received U.S. Federal Service Mark Registration Nos. 2,427,973; 2,430,811 and 2,430,812 for the mark B2BWORKS for use with advertising agency services, placing advertisements for others, and providing information in the field of advertising rendered by means of a global computer information network. B2BWorks owns the domain name registration for B2BWORKS.COM, which it acquired since it was first registered on October 30, 1998. B2BWorks operates its principal business web site at B2BWORKS.COM and B2BWORKS.NET which provide the company’s main Internet presence.
In or about December 2000, Complainant was apparently rendering some level of on-line advertising services to Respondent, so the parties were clearly aware of one another and their relative capabilities in the advertising business. During this period, Respondent registered the domain names <b2adworks.com>, <b2adswork.com> and <b2adwork.com>.
Respondent does not operate an active web site or on-line business at any of these domain name addresses. The domain names <b2badworks.com> and <b2badwork.com> resolve to an "under construction" page. The domain names <b2badswork.com> and <b2mediaworks.com> are used to divert traffic from B2BWorks to a competitive web site operated by Respondent.
William Furlong, President of Complainant, had a telephone conversation with Richard Bauman, President of Respondent, on February 2, 2001. Mr. Furlong expressed his deep concern to Mr. Bauman about Respondent’s registration of these domain names at issue and the fact that they were confusingly similar to the service mark and name B2BWORKS and the domain name <b2bworks.com>. Furlong requested that Respondent stop using the names and assign the names to B2BWorks.
On the very same day, February 2, 2001, with notice of B2BWorks’ prior rights, Respondent registered the domain name <b2bmediaworks.com>, the fourth domain name at issue. On February 5, 2001, Respondent registered the domain name, <b2bontarget.com>, and launched a web site that directly competes with B2BWorks and pointed the domain name <b2bmediaworks.com> to that website.
In ensuing conversations between the presidents of the parties, Complainant offered Respondent $7,500 for transfer of the domain names at issue. Respondent appears to have rejected that proposal and does not deny, demanding $100,000 for the transfer.
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.
Identical and/or Confusingly Similar
Complainant does not have the exclusive rights to use the terms "B2B" and "WORKS." See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that 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"). There appears little doubt from the undisputed facts and circumstances that Respondent was stimulated to register the domain names at issue shortly after commencing a business relationship with Complainant and after admitted communications between the parties in the case of one of the domain names at issue.
Whether the domain names at issue are likely to confuse the public as to their source, sponsorship, affiliation or endorsement, given that the names are clearly distinct from Complainant’s trademark, is a matter for resolution by some other tribunal which might also have jurisdiction over some of the anti-competitive issues suggested. At any rate, for the purposes of this proceeding, I find that Complainant has failed to satisfy the requirements of Paragraph 4(a)(i)of the Policy.
It is, accordingly, not necessary for this Panel to find whether Respondent had rights or legitimate interests in respect of the domain names at issue (Paragraph 4(a)(ii) of the Policy) or whether their registration and use has been in bad faith (Paragraph 4(a)(iii) of the Policy).
It is the decision of this Panel that the domain names, <b2adworks.com>, <b2mediaworks.com>, <b2adswork.com> and <b2adwork.com>, not be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: June 5, 2001
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