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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Council of Better Business Bureaus, Inc. v. Server 100

Case No. D2006-0443

 

1. The Parties

Complainant is Council of Better Business Bureaus, Inc., Arlington, Virginia, United States of America, represented by Victoria Jean Doran, United States of America.

Respondent is Server 100, Jupiter, Florida, United States of America; Anthony Maza, Jupiter, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <betterbusinessonline.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 11, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 11, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 27, 2006.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Response was filed with the Center on May 10, 2006.

The Center appointed Mr. M. Scott Donahey as the sole panelist in this matter on June 9, 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 is the registrant of several marks in connection with “investigative and information services relative to business and trade practices for protecting responsible business against abusive business practices and for establishing and maintaining legitimate advertising and merchandising practices.” The marks include BETTER BUSINESS BUREAU, BBB, and BBBOnLine. The BBB and BETTER BUSINESS BUREAU marks have been in continuous use since 1916.

Complainant also holds registrations for BBBOnLine reliability logos in connection with computerized online investigative and information services relative to “business and trade practices for establishing and maintaining legitimate advertising and merchandising practices” and “computerized online complaint handling services, namely, real time complaint assistance, electronic mediation, and requests for arbitration of disputes between companies doing business online and their customers.” One logo features a circle surrounding a torch, whose flame is separated from the torch’s body by three capital B’s (BBB). Below the circle logo are the words “RELIABILITY PROGRAM”. At the very bottom are the words BBBONLINE. The second logo features the same torch emblem as the first, but this time to the far left. To its right are the words BBBONLINE, and below that the word “RELIABILITY” and below that the word “PROGRAM”. These registrations date back to March 2002 and claim a first use in commerce in November 1999.

Complainant is the umbrella organization for local Better Business Bureaus, often referred to as BBBs.

Respondent registered the domain name at issue on July 7, 2001 (Complaint, Annex 1). Respondent has used the domain name at issue to resolve to a web site displaying a yellow “sunburst” logo with “betterbusinessonline.com” in the outer one-third of disc and two overlapping Bs in the center. Opposite the “sunburst” logo is the word “Better” above the word “Business”and next to the word ONLINE displayed against a blue city skyline. Beneath these are the words “The Internet Business Resource Guide”. The web site to which the domain name at issue resolves contains article on small and medium sized Internet businesses, a calendar of online business development conferences, a listing of businesses using business solutions provided by Phasedata, a company of which Respondent’s principal is the President, and free newsletters with such titles as BBO Online Guide, BBO Market Mall, Business Newsletter, Career Insider, and Technology Insider. Respondent has used the domain name at issue to resolve to this web site continuously since the domain name’s registration and the content has changed little over the five year period of use.

Respondent does not offer advice to consumers, accept complaints about business practices, or offer arbitration or mediation services. Respondent promotes business success and maximization of profits, rather than legitimate marketing and advertising. The web site features businesses using the ecommerce products of Phasedata, Inc., of which Respondent’s principal is president. It allows users to search the businesses and to purchase goods and services. The web site repeatedly references itself as “BBO”.

Respondent conducted a Google search for “Better Business Online” and got 12,800 results, including Better Business Online magazine and “Creating Better Business Online”. (Response, Annex A). A search of the Dunn and Bradstreet company listings revealed hundreds of companies in the United States with “better business” as part of their name. (Response, Annex B). Respondent also found more than 300 currently active domain names with “betterbusiness” as part of the second-level domain name. (Response, Annex C).

On March 18, 2004, Complainant sent Respondent a cease and desist letter, asking that Respondent change its name as well as its domain name. On March 24, 2004, Respondent, refusing to surrender its business name and domain name, but offering “to discuss alternative settlements, including reciprocal disclaimers, reciprocal links, and/or other remedies”.

On November 9, 2004, Complainant sent Respondent another cease and desist letter, stating that the only settlement Complainant was “willing to discuss is a phase out period,” and expressly rejected mutual disclaimers or reciprocal links.

On March 16, 2005, Complainant’s outside counsel sent Respondent another cease and desist letter, demanding that all content be immediately removed from the web site to which the domain name at issue resolved, that Respondent change its business name, and offering to discuss a phase out, again rejecting the use of a disclaimer. On April 12, 2005, Respondent replied to Complainant’s outside counsel, noting the hundreds of companies that use “better business” in their company name, denying there was any confusion between the business conducted by Respondent and that conducted by Complainant, and suggested that if Respondent were to accept a phase out, then he should be compensated by a lifetime membership in the Better Business Bureau.

On or about April 14, 2005, Complainant’s outside counsel called Respondent and informed him that there were no lifetime memberships in the BBB. On April 14, 2006, Respondent emailed Complainant’s outside counsel, indicating that he had contacted the local BBB office, and that he was requesting a ten year membership in BBB and a ten year membership in BBBonline Reliability and Privacy Seal, which the local BBB had told him was available for standard purchase by business for a total of $9950. If this was agreeable, then Respondent indicated that it would be willing to phase out use of the domain name at issue and the business name.

On April 28, 2005, Complainant offered to pay Respondent up to a maximum of $200 toward the registration of the alternative domain name <betteronlinebusiness.com> and to pay any transfer fees in connection with the transfer of the domain name at issue. Respondent rejected this. Email exchanges continued along this vein with no resolution.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar to Complainant’s marks, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name at issue in bad faith in that Respondent is attempting to capitalize on the reputation and goodwill associated with Complainant’s marks. Complainant demonstrated his bad faith by requesting ten years of standard membership in the Better Business Bureau and ten years of BBBOnline Reliability and Privacy Seal membership. $9,900 is the standard amount that businesses pay for these memberships. (Complaint, Annex 5).

B. Respondent

Respondent contends that the domain name at issue is not confusingly similar to Complainant’s marks. Respondent contends that it has rights and legitimate interests in the domain name at issue because the words incorporated in the domain name are common words and are descriptive of the services that Respondent is offering at the web site to which the domain name resolves and has offered for the last five years. Respondent contends that his use of the domain name to resolve to a web site for the offering of legitimate services shows that the domain name was not registered and is not being used in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:

i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

ii) that the respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under the objective test for confusing similarity, if important elements of a mark, or words confusingly similar to important elements of a mark, are present in the domain name at issue, then the domain name is confusingly similar to the mark. In the present case “betterbusiness” is identical to important elements of Complainant’s BETTER BUSINESS BUREAU mark and “online” is identical to an important element of Complainant’s BBBOnLine mark. Even under the subjective test, the combination of elements might cause a user to be confused as to whether the domain name belonged to the Better Business Bureau. Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant’s service marks.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph (a)(ii), inter alia, by providing evidence of any of the following circumstances:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the present case, for five years Respondent has used the domain name at issue, consisting of three common English words and the gTLD suffix .com to resolve to a web site on which goods and services are offered in respect of conducting “better business online.” Respondent demonstrated that the common English words “better business” are used by many businesses in their business names, that numerous references come up in Google searches, and that more than 300 active domain names incorporate those words in their names. Panels have long held that in such situations a Respondent has rights and legitimate interests in respect of the domain name at issue. Car Toys, Inc. v. Informa Unlimited, Inc., National Arbitration Forum Case No. FA93682. As a noted panelist stated in a similar case:

“The weakness of the EAUTO trademark makes it difficult for Complainant to argue that Respondent lacks a legitimate interest in the domain name <eautoparts.com>. That is because this domain name <eautoparts.com> is descriptive of a business that offers, through the Internet, information about or sales of automobile parts, and it is inappropriate to give Complainant a wide monopoly over all domain names, even descriptive ones, that incorporate the mark EAUTO. Thus, if an automotive-based business were to adopt this name for the purpose of describing an element of its business, and not for the nefarious purpose of causing confusion or diversion of business, then that would constitute a legitimate use.” EAuto L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096.

In the present case, Respondent registered and has used the domain name at issue to promote better online business, and did not attempt to contact Complainant to try to sell the domain name to it. When initially contacted, Respondent offered to discuss the use of mutual disclaimers and mutual links. (Complaint, Annex 5; Response, Annex E). Complainant did not respond to this request. Respondent’s web site does not offer any of the services offered by Complainant, and Respondent’s logo is decidedly different from those of Complainant.

Accordingly, the Panel finds that the Respondent has rights and legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

Because the Panel has determined that the Respondent has rights and legitimate interests in respect of the domain name at issue, it is not necessary to reach this issue.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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M. Scott Donahey
Sole Panelist

Dated: June 22, 2006