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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CyberTrader, Inc. v. Gregory Bushell
Case No. D2001-1019
1. The Parties
Complainant is CyberTrader, Inc., a corporation located in Austin, Texas, USA.
Respondent is Gregory Bushell, an individual located in Richardson, Texas, USA.
2. The Domain Names and Registrar
The domain names at issue are:
(collectively, the "Domain Names")
The registrar is Register.com
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999, ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Rules").
The Complaint was submitted on August 7, 2001. On August 16, 2001, Register.com confirmed registration of the Domain Names at issue to the Respondent. The Response was submitted on September 6, 2001. The Complainant filed a supplemental filing on September 17, 2001.
On October 1, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Single Panelist.
4. Factual Background
Complainant is a securities broker specializing in electronic trading and brokerage services. Complainant is a wholly owned subsidiary of CyBerCorp Holdings, Inc., which was formed on September 12, 2000, when "CyBerCorp, Inc." changed its name to "CyBerCorp Holdings, Inc."
On October 19, 1998, CyBerCorp, Inc., applied for registration of the marks CYBERTRADER and CYBERBROKER with the United States Patent and Trademark Office (USPTO).
On February 7, 2000, the USPTO issued final refusals to place CYBERTRADER or CYBERBROKER on the Principal Register. The marks were subsequently placed on the Supplemental Register on September 26, 2000, and November 7, 2000.
On March 29, 2001, Complainant’s parent company filed a new application to have CYBERTRADER placed on the Principal Register. The mark has not yet been registered.
Complainant claims that has rights in the CYBERTRADER AND CYBERBROKER marks, but has submitted no evidence to show the nature and extent of its use. Complainant alleges that it has rights in CYBERTRADER PRO, CYBERTRADER U and CYBERTRADER UNIVERSITY, but has submitted no evidence of use or registration.
The Respondent is a "venture capitalist," who also owns and operates several web sites, including <stockpilot.com> and <tradealink.com>, the latter of which offers domain names for sale. On September 24, 1999, the Respondent registered <thecybertrader.com> and <thecybertraders.com> as domain names with Register.com. Respondent registered the domain name <thecyberbroker.com> with Register.com on May 9, 2000.
On August 1, 2001, Respondent sent Complainant an email message claiming that it had registered the Domain Names prior to Complainant's acquisition and use of CYBERTRADER. Respondent asked Complainant to cease use.
5. Parties' Contentions
Complainant contends that the Domain Names are indistinguishable from the Complainant’s marks and are, therefore, likely to cause confusion among users "as to the source, sponsorship, affiliation, or endorsement of Respondent’s Web sites."
Complainant also contends that Respondent has no legitimate interest in the Domain Names because he has failed to use the Names in a bona fide offering of goods and services, is not "known by or connected with" the Names, adopted the Names with "prior awareness of Complainant’s trademarks and service marks," and "has engaged in a pattern of conduct that prevents Complainant from reflecting its mark in corresponding domain names."
Complainant contends that Respondent registered the Domain Names in bad faith because he "knew or should have known of Complainant’s marks prior to registering the Domain Names," he seeks to "interfere with and disrupt Complainant’s business by preventing Complainant from using the most obvious and logical names for Complainant’s business," and "the Domain Names do not resolve to a substantive online presence." Finally, Complainant contends that Respondent’s "bad faith registration alone" constitutes bad faith use of the Domain Names.
Respondent contends Complainant has no rights in the CYBERTRADER and CYBERBROKER marks, arguing that these terms are merely descriptive and Complainant has failed to submit evidence "to establish either fame or strong secondary meaning." Respondent further contends that Complainant’s marks are "common words and descriptive terms" and may be registered "as domain names on a first come first served basis."
Respondent argues that at the time he registered the Domain Names, the USPTO had not registered a trademark for CYBERTRADER, CYBERTRADERS or CYBERBROKER to Complainant or anyone else. Respondent contends that he has never operated a web site using the Domain Names that diverted Internet traffic away from the Complainant’s web site, but that he has used the name <thecyberbroker.com> in a bona fide offering of goods and services that are different from the services Complainant offers. Finally, Respondent contends that he registered the Domain Names before Complainant registered its domain name <cybertrader.com> and requests that <cybertrader.com> be transferred from Complainant to Respondent. This later request is not properly before the Panel and will not be considered.
6. Discussion and Findings
Our inquiry focuses on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
A threshold question here is whether Complainant has established a protectable right in either CYBERTRADER or CYBERBROKER. In order to have a protectable right, Complainant’s marks must be distinctive and used in commerce. Federal registration of a mark is prima facie evidence of its distinctiveness. Complainant makes reference to the "registration" of the CYBERTRADER and CYBERBERBROKER marks with the USPTO. Complainant fails to mention, however, that the USPTO refused to place either of these marks on the Principal Register, and the registration numbers Complainant cites refer to the Supplemental Register, which provides the Complainant with no protectable rights in the marks.
In my opinion both CYBERTRADER and CYBERBROKER are merely descriptive of a business that provides some type of trading or brokering transactions over the Internet and are, therefore, not eligible for federal trademark protection absent a showing of secondary meaning. The USPTO’s refusal to place these marks on the Principal Register supports my opinion. Complainant may very well have evidence establishing secondary meaning in the marks CYBERTRADER and CYBERBROKER, but none is presented in the record here.
Complainant also claims to have "acquired common law trademark rights" in several marks containing the word "CYBERTRADER." However, Complainant provides no other information or evidence to establish protectable common law rights in these marks. Absent any proof of secondary meaning, I cannot conclude that Complainant has a protectable right in either CYBERTRADER or CYBERBROKER.
Because Complainant failed to prove it has protectable rights in CYBERTRADER or CYBERBROKER, it, therefore, failed to prove it has a bona fide basis for filing a complaint in this matter. The Domain Names at issue may very well be confusingly similar to Complainant’s trademarks, but absent proof of Complainant’s protectable rights in the marks, such similarity is irrelevant.
B. Legitimate Interest
Complainant contends that Respondent has no legitimate interest in the Domain Names because, inter alia, Respondent failed to use the Names in a bona fide offering of goods and services, and Respondent is not "known by or connected with" the Domain Names.
Complainant’s "Exhibit D" demonstrates that the domain name <thecyberbroker.com> is being used by Respondent in a bona fide offering of goods and services.
The same is not true for the cybertrader domain names. Although Respondent also claims to be involved in some type of business venture named "The Cyber Trader," it is not clear from the record what this business venture entails and what steps Respondent has taken to bring this venture to fruition. The record does not show that Respondent is using the Domain Names <thecybertrader.com> or <thecybertraders.com> in a bona fide offering of goods and services, and there is no evidence, save Respondent’s claims, that Respondent is known by or connected with either of these two Names.
Complainant may have met its burden of proof with respect to showing Respondent’s lack of a legitimate interest in <thecybertrader.com> and <thecybertraders.com>, but, absent proof of Complainant’s protectable rights in the marks, competing proprietary interests in domain names must be resolved on a first come first served basis. See Zero International Holding GmbH & Co.Kommanditgesellschaf v. Beyonet Services and Stephen Ulrich, WIPO Case No. D2000-0161.
C. Bad Faith
Complainant contends that Respondent registered the Domain Names in bad faith because he "knew or should have known of Complainant’s marks prior to registering" them. That may be the case, but, other than the bald claim that its marks "have become associated worldwide with Complainant’s goods and services, " Complainant failed to provide any evidence to support this contention.
As to the domain name <thecyberbroker.com>, Respondent registered this name five months after Complainant was denied its application to have CYBERBROKER placed on the Principal Register. It is difficult to find bad faith where Respondent could have relied, in good faith, on the USPTO’s refusal to register CYBERBROKER.
As to the other domain names, Respondent registered these at a time when Complainant had pending applications to register CYBERTRADER. Mere applications for registration do not prove any protectable rights. In fact, the applications were ultimately refused. Under these circumstances, without evidence of prior use to support a claim for common law rights, it is again difficult to find bad faith. Obviously, Respondent is at risk if Complainant does in fact have prior use to establish prior common law rights.
Complainant provided no evidence that Respondent used the Domain Names to divert Internet traffic from Complainant for commercial gain. The mere existence of Respondent’s web site <thecyberbroker.com>, which appears to be a "how to get rich quick using the Internet" site (including selling domain names) and does not venture into electronic trading and brokerage services for securities, is not, by itself, proof that Respondent has diverted traffic from the Complainant.
I do, however, find the Respondent’s electronic mail message to Complainant troubling. This letter may be evidence of Respondent’s intent to "prevent the Complainant from reflecting its mark in the corresponding domain name," and creates an inference that the Respondent also intended to disrupt Complainant’s business. Taken in conjunction with Respondent’s web site <TradeALink.com>, which is clearly designed to market domain names, one might also infer that Respondent intended to "sell, rent, or otherwise transfer the domain name registrations to the Complainant or to a competitor of the Complainant." If Complainant had provided evidence of prior common law rights, these facts may have been sufficient for a finding in its favor. However, absent a showing of protectable rights of the Complainant in the Domain Names at issue, I conclude that Complainant has also failed to establish bad faith registration and use.
Complainant has failed to present sufficient evidence of protectable rights in the marks CYBERTRADER or CYBERBROKER. Accordingly, Complainant's request for relief is denied as to <thecybertrader.com>, <thecybertraders.com>, and <thecyberbroker.com>.
Mark V. B. Partridge
Dated: October 15, 2001
ADDENDUM TO ADMINISTRATIVE PANEL DECISION
CyberTrader, Inc. v. Gregory Bushell
Case No. D2001-1019
This is an Addendum to the Administrative Panel Decision ("Decision") dated October 15, 2001 with regard to the domain name dispute between the parties involving the domain names <thecyberbroker.com>, <thecybertrader.com>, <thecybertraders.com>.
Further Procedural History
On October 25, 2001, the Respondent, Mr. Gregory Bushell ("Respondent"), contacted the WIPO Arbitration and Mediation Center ("Center") by e-mail indicating that the Administrative Panel Decision did not address the Respondents request for a finding of reverse domain name hijacking.
This addendum addresses the Respondents request.
Reverse Domain Name Hijacking
In its Response, Respondent alleged that Complainant is guilt of "attempting to reverse hijack respondents [sic] property." The Response states:
"The Complainant produced no evidence that it had attempted to contact the respondent and negotiate a resolution of the matter prior to initiating the panel proceeding, and where the domain names at issue consists [sic] of a well-known common, descriptive English phrase(s), and where the complainant knew that the respondent had registered for sale other domains names all which consist of common and / or descriptive words and phrases together with the generic top level domain names.
"Therefore, the Complainant should be found to be operating in "Bad Faith" and required to surrender the domain name CyberTrader.com to Respondent. This action is within the scope of the Uniform Domain Name Dispute Resolution Policy. The panelist is duty bound to set precedence [sic] if necessary in order to protect the integrity of the ICANN system from such behavior as exhibited by the Complainant."
In support of its request, Respondent cites K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622 (WIPO August 23, 2000), Cf. Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (WIPO January 4, 2001).
Paragraph 15(c) of the Rules provides the Panel with the authority to make a finding of reverse domain name hijacking, stating:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Panels have made a finding of reverse domain name hijacking in a small number of cases. See e.g., Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, WIPO Case No. D2001-0916 (WIPO October 12, 2001).
Reverse domain name hijacking involves an attempt by a trademark owner to take a domain name for another party without having a colorable legal right to do so. Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823 (WIPO August 28, 2001). The finding is not appropriate where there is a legitimate dispute over the right to hold the domain name and the Complainant pursues the matter in an appropriate forum. Id.
In K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622 (WIPO August 23, 2000), the Complainant owned rights in the famous mark K2r for spot remover. The Respondent, a retailer name Kirk & Rosie Rich, registered the domain name <k2r.com> as a derivative of its store name. The Panel agreed that the Respondent had a legitimate interest in the domain name and had not registered it in bad faith. Two of the panelist further found that the case had been brought in bad faith because the Complainant had ascertained all facts necessary to conclude the Respondent had not violated the Policy at the time the Complainant was filed. The remaining panelist disagreed on that issue, finding that the Complainant had a reasonable, although ultimately erroneous, basis for filing the action.
In Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (WIPO January 4, 2000), a unanimous panel found that the complainant had been filed in bad faith. The Complainant owned rights in the mark GOLDLINE for gold and precious metals. The Respondent, operated a consulting business specializing in vanity toll-free numbers, registered the domain name <goldline.com>. The panel found that the respondent had a legitimate interest in using the domain name for an unrelated business and had not registered or used the name in bad faith. The panel also concluded that the complaint had been filed in bad faith. In explaining its decision, the panel stated the following standard for finding bad faith under Paragraph 15(c) of the Rules.
"To prevail on such a claim, Respondent must show that Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith."
As a starting point in this case, I note that neither the Policy, Rules or prior decisions provide the panel with authority to grant Respondent's request that Complainant's domain name be transferred to Respondent. To obtain that relief, Respondent would need to file a separate action in Court or under the Policy. As for a finding of bad faith under Paragraph 15(c) of the Rules, I do not believe it is warranted in this case. Complainant owns Supplemental Registrations for CYBERTRADER and CYBERBROKER, and therefore has made actual use of the alleged marks, although it failed to present evidence of the nature and extent of that use. Therefore, it appears that Complainant held a sincere belief that it had rights in the marks. In addition, as noted above, the circumstances relating to Respondent's registration and use seem suspicious. Although I have found a failure of proof of the claims, I do not find that Complainant either knew of "Respondent's unassailable right or legitimate interest" or that Respondent knew there was a "clear lack of bad faith registration and use." It appears to me that Complainant had a reasonable, although ultimately unproved or erroneous, basis for filing the action. I do not find that Complainant brought the claim with knowledge that the claim lacked merit. Therefore, Respondent's request for a finding of reverse domain name hijacking is denied.
The Panelist accordingly reaffirms the Decision; the Complainant has failed to present sufficient evidence of protectable rights in the marks CYBERTRADER or CYBERBROKER. Accordingly, Complainant's request for relief is denied as to <thecybertrader.com>, <thecybertraders.com>, and <thecyberbroker.com>.
Mark V. B. Partridge
Dated: October 30, 2001