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and Mediation Center
Upbeat, Inc. v. Scott Fabian
Case No. D2006-0332
1. The Parties
The Complainant is Upbeat, Inc., St. Louis, Missouri, United States of America, represented by Roberts, Perryman, Bomkamp & Meives P.C., United States of America.
The Respondent is Scott Fabian, St. Ambrose Foundation, East Stroudsburg, Pennsylvania,
United States of America, represented by Saul Ewing LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <upbeat.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2006. On March 17, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name) at issue. BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2006. Respondent submitted a response on April 7, 2006.
The Center appointed Mark V.B. Partridge as the sole
panelist in this matter on April 24, 2006. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Complainant owns two U.S. Trademark Registration relating to the mark UPBEAT:
UPBEAT INCORPORATED (in stylized letters), Reg. No. 3,055,261, filed February 16, 2005, registered January 31, 2006, and
UPBEAT, Reg. No. 3,055,263, filed February 16, 2005, registered November 8, 2005.
Both are for “Catalog mail order services and computerized on-line ordering and telephone ordering services featuring outdoor site furnishings and amenities; office building, lobby and conference room furnishings and amenities; facility maintenance, safety and security products; and banners, flags and signs for use in public spaces and facilities,” claiming first use in July 1982.
Complainant asserts that it began using the mark UPBEAT on catalogs sent to potential customers in 1982.
Respondent registered the domain name <upbeat.com> on September 4, 1995. Respondent has used the site in connection with information relating to jazz music since at least August 27, 1996. The site includes commercial advertising links to unrelated sites as an apparent means to generate revenue.
In 2000, Complainant contacted Respondent about the use of the domain name.
Respondent offered to sell the domain name for $250,000. In 2006, Complainant
again contacted Respondent about the domain name. This time, Respondent offered
to sell the domain name for $25,000.
5. Parties’ Contentions
Complainant contends that the domain name is identical to a mark in which it has rights, that the Respondent has no rights or legitimate interest in the domain name, and the registered and used the domain name in bad faith as shown by its demand for payment in excess of the cost of the domain name.
Respondent contends that it adopted the domain name
prior to any trademark registration by Complainant without knowledge of Complainant’s
use of the mark UPBEAT. Respondent contends that it has made legitimate use
of the domain name for over ten years in connection with information about jazz
music. Respondent further contends that its offer to sell the domain names is
not evidence of bad faith because the offer was solicited by Complainant and
because the domain name has legitimate value to Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant contends that the domain name is identical to a mark in which Complainant has rights. Respondent does not deny Complainant’s ownership of registrations relating to the mark UPBEAT, but notes that these were not obtained until long after Respondent registered and began use of the domain name. Respondent further contends that Complainant has failed to provide evidence to support its claim of use prior to Respondent’s registration of the Domain Name.
Complainant has relied primarily on its federal registration to establish its claim, and has provided no evidence as to the nature and extent of its use of UPBEAT prior to seeking registration. For the purpose of this factor, Complainant has made a sufficient showing that it has rights in the UPBEAT trademark. It further appears that the domain name is identical or confusingly similar to Complainant’s mark. Complainant’s lack of evidence regarding the nature and scope of its rights prior to Respondent’s use of the domain name will be considered further below.
The Panel finds that the domain name is identical or confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant asserts Respondent has no rights or legitimate interest in the domain name because it was registered and used after Complainant began use of the UPBEAT mark. Respondent contends that it registered the domain name without knowledge of Complainant’s use of UPBEAT as an apt name for a web site relating to jazz and has continuously used the domain name in connection with jazz for over ten years.
This Panel and others have found that adoption and use of a domain name to trade on the goodwill of another cannot be considered use of the domain name in connection with a bona fide offering of goods or services. That, however, does not appear to be the situation here. Complainant’s use of the UPBEAT mark is in connection with indoor and outdoor furnishings. Respondent’s use of UPBEAT in connection with jazz music is not an obvious attempt to trade on Complainant’s goodwill. Moreover, there is no basis in the record for rejecting Respondent’s claim that it registered the domain name without knowledge of Complainant. Complainant has not shown that its business was famous or widely known in 1995 and it had no trademark registrations at that time. Thus, the Panel concludes that Complainant has filed to demonstrate that Respondent used the domain name in an attempt to trade on Complainant’s goodwill.
Respondent has presented evidence showing that it has used the domain name in connection with information about jazz musicians since at least August 27, 2006. Complainant has presented nothing to rebut Respondent’s claim that it has made legitimate use of the domain name for ten years. There is no basis in the record for concluding that the operation of the site has been a sham to disguise cybersquatting activities. Therefore, the Panel finds that Complainant has failed to prove that Respondent lacks rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Complainant contends that the domain name was registered and used in bad faith because Respondent has offered to sell the domain name for an amount in excess of its out-of-pocket expenses. One of the factors considered as circumstances indicating bad faith is the attempt to sell a domain name for profit based on its similarity to another’s trademark mark. However, Respondent correctly asserts that an offer to sell a domain name is not per se proof of bad faith registration and use, particularly where the domain name has value to the registrant. The question turns on whether the registrant obtained the domain name for the purpose of selling it for profit knowing that it was identical or confusingly similar to a mark owned by another.
In a similar situation in Avnet, Inc. v. Aviation Network, WIPO
Case No. D2000-0046, the Panel stated:
“We find that the Complainant has not met its burden of proof on the issue of bad faith registration and use. There is no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names. It does not appear from the evidence submitted that Respondent registered the domain name for the purpose of disrupting the business of a competitor. Further, the record contains insufficient evidence to establish that Respondent intentionally attempted to create a likelihood of confusion with Complainant’s mark. Rather, based on the record before us, it appears that Respondent used the AVNET name for a bona fide business which is not directly competitive with Complainant’s business. Finally, under the circumstances, Respondent’s offer to sell the domain name registration for a mutually agreeable price does not establish bad faith. Under the Policy, trafficking in a domain name for profit demonstrates bad faith where the registrant lacks a legitimate prior interest in the name. In this case, however, Respondent has demonstrated a long standing interest in the name and may in good faith seek more than out-of-pocket expenses to relinquish its interest in the name.”
The same principles apply here. Given the lack of evidence presented by Complainant as to the nature and extent of its use of UPBEAT prior to registration of the domain name, it appears more likely than not that Respondent registered the domain name without knowledge of Complainant’s use because the domain name was an apt choice for a web site about jazz music. Respondent then made legitimate use of the domain name for about ten years. Under these circumstances, its response to Complainant’s offer to purchase the domain name does not establish bad faith registration and use.
The Panel therefore finds that Complainant has failed to prove bad faith registration and use of the domain name.
Respondent requests a finding of reverse domain name hijacking. Complainant,
however, has demonstrated rights in the UPBEAT mark, and had a colorable basis
for seeking transfer of the domain name. Accordingly, the request for a find
of reverse domain name hijacking is denied.
For all the foregoing reasons, the Complaint is denied.
Mark V.B. Partridge
Dated: May 15, 2006