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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CWIE, LLC v. Alex Berg

Case No. D2006-1303

 

1. The Parties

The Complainant is CWIE, LLC, Tempe, Arizona, United States of America, represented by Tiffany & Bosco, P.A., United States of America.

The Respondent is Alex Berg, London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <cc-bill.net> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2006. On October 11, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On October 12, 2006, CSL Computer Service Langenbach GmbH dba Joker.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 October 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2006.

The Center appointed Ross Wilson, Richard W. Page and Isabel Davies as panelists in this matter on December 5, 2006. The Panel finds that it was properly constituted. Each member of 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.

The panel emailed the Complainant’s representative on December 27, 2006, seeking proof that the CWIE LLC, the Complainant, is the same company as Cave Creek Wholesale Internet Exchange, LLC, the owner of the trademark CC Bill. No reply was received.

 

4. Factual Background

CWIE, LLC is a company incorporated in the United States of America. Its trade name is Cave Creek Wholesale Internet Exchange, LLC and is engaged in web hosting. The Complainant has been using the mark CC BILL since 1998 which has been registered on the USPTO Supplementary Register since October 30, 2001.

CCBill, LLC is a sister company of CWIE, LLC and is a licensee of the CC BILL trademark. CCBill has provided electronic billing and online payment processing services since 1998 in the Unites States, Europe and other parts of the world. Each year it processes millions of transactions for companies engaged in Internet commerce.

On July 11, 2006, the Complainant advised the Respondent’s ISP that the disputed domain name was infringing CWIE’s registered trademark. The advice was forwarded onto the Respondent who replied on the same day stating “The logo i was using is similar to yours but since i have changed this logo it is not identically similar to your logo it is not similar to your logo anymore and it is mine”. A follow up email sent to the Respondent on the same day sought a voluntary transfer of the disputed domain name. The Respondent did not reply.

The disputed domain name was registered on July 5, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it is the exclusive owner of the CC BILL trademark;

- the Respondent’s use of the disputed domain name creates a likelihood of confusion because it is identical to the Complainant’s trademark;

- the services for which the Respondent uses the disputed domain name duplicates the complainant’s services;

- the respondent uses the same marketing channels to reach the same customers;

- the Respondent used the Complainant’s trademark with knowledge that it was another’s trademark;

- potential clients are likely to be confused and conclude that the disputed domain name is authorized or approved by CWIE or its related company and licensee CCBill;

- the disputed domain name was registered after the Complainant’s trademark was registered;

- the Respondent’s intent in registering and using the disputed domain name is to entice clients and potential clients who are aware of CWIE or its related company and licensee CCBill for commercial gain;

- the Respondent’s use of CC-BILL in the domain name was not necessary to describe the service offered and results in liability for infringement and dilution;

- the Respondent established the disputed domain name for commercial purposes that is not within the bounds of fair use;

- the Respondent has no legitimate interest in the disputed domain name;

- the Respondent has demonstrated bad faith in using the disputed domain name to compete with the Complainant and its associated company to attract Internet users for financial gain or to derive a benefit based on the reputation of the Complainant’s trademark;

- the Respondent has further demonstrated bad faith by misusing the marks of other service providers on his website; and

- the Respondent’s use of the disputed domain name dilutes the distinctiveness of the CC BILL trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the policy, as follows:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant claims rights from the US trademark CC BILL registered on October 30, 2001. The Complainant claims that, aside from the hyphen and top level extension, the disputed domain name <cc-bill.net> is confu singly similar to its trademark CC BILL.

The differences between the Complainant’s trademark and the disputed domain name are the hyphen that separates the “cc” from the “bill” and the generic top-level domain (gTLD). The use of a gTLD is generally accepted as immaterial when determining whether a domain name is identical or confusingly similar to a trademark (see Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252). Similarly, it has been well accepted in previous panel decisions that the use of a hyphen does not provide a sufficient distinction to avoid confusing similarity between the disputed domain name and the Complainant’s trademark (see Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001).

The Panel therefore finds that Complainant’s rights in the trademark CC BILL are uncontested and that the disputed domain name is confusingly similar to its registered trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate his rights or legitimate interests in the name CC-BILL. In these circumstances the Panel under paragraph 14(b) of the Rules is entitled, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.

The evidence provided by the Complainant is that it has never sponsored or endorsed the Respondent’s website. In fact, the Complainant does not allow any unauthorized use of its trademark. The Complainant has demonstrated that the Respondent was using CC-BILL on his website for commercial gain and not within the bounds of fair use. Also, the Complainant has demonstrated that the Respondent’s adopted the use of the disputed domain name in the knowledge of the Complainant’s trademark and its use of that trademark for credit card processing services.

Based on the evidence provided by the Complainant the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The Complainant asserts that the bad faith domain name registration and use is evidenced by its use to disrupt the business of CWIE and its licensee CCBill, by the Respondent intentionally creating confusion and by misrepresenting that he is certified by other service providers.

Clearly, the close similarity of the disputed domain name to the Complainant’s trademark could be confusing to the Complainant’s customers and potential customers and cause some disruption its business. Also, the disruption and confusion appears to be intentional as the Respondent is highly unlikely to have registered the distinctive name CC BILL by mere chance. In fact, the Respondent’s email reply to the initial contact with the Complainant suggests a prior knowledge of the Complainant’s trademark. Also, there is a strong similarity between the “payment processor” service offered on the Respondent’s website and the credit card processing services made available by the Complainant.

Finally, the Complainant’s evidence of the Respondent’s unauthorized use of the VeriSign Secured and TRUSTe logos in his website leads to the conclusion that the domain name is being used in bad faith.

On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the domain name was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cc-bill.net> be transferred to the Complainant.


Ross Wilson
Presiding Panelist

Richard W. Page
Panelist

Dated: January 16, 2007


DISSENT

The Complainant has not demonstrated that it has rights in the mark CC Bill, on which it bases its complaint, as required under the UDRP. The Complainant is CWIE LLC. The trademark CC Bill is registered to Cave Creek Wholesale Internet Exchange LLC and the registration certificate is provided. The Complainant claims that the connection between it and the trademark owner is that it owns the trade name Cavecreek Wholesale Internet Exchange, for which evidence is also provided. It asserts that this trade name is the same entity as the owner of the trademark. However, this trade name owned by the Complainant cannot be the same entity as the LLC that owns the trademark - the trade name registration form in fact specifically says that the letters “LLC” cannot form part of a trade name. Thus the Complainant has failed to establish a link between it and the entity that owns the trademark, and so has failed to establish its right the trademark.

As the Complainant has failed to make out one of the essential grounds of the UDRP, its complaint must fail.


Isabel Davies
Dissenting Panelist

Dated: January 16, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1303.html

 

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