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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Bear Stearns Companies Inc. v. Yi Yanlin

Case No. D2006-1660

 

1. The Parties

The Complainant is The Bear Stearns Companies Inc. of New York City, New York, United States of America.

The Respondent is Yi Yanlin of Beijing, People’s Republic of China.

 

2. The Domain Name and Registrar

The disputed domain name <beardirect.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2006. On January 3, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 3, 2007, Intercosmos Media Group d/b/a directNIC.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 and technical contact. Hardcopies of the Complaint were received (after several reminders) by the Center on February 8, 2007. 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 February 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2007, which was extended by the Center to March 12, 2007. The Response was filed with the Center on March 12, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on March 21, 2007. 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

The Complainant Bear Stearns is a well established US-based financial services company which has been in business for over twenty years. The Complainant registered the trademark BEAR DIRECT on September 19, 2006 (U.S. Registration Number 3,146,091). A copy of this registration has been provided to the Panel. The Complainant uses the trademark in connection with the following services:

“financial services, namely, providing internet-based mortgage banking services for customers and clients to view and input information relating to various financial services, namely, mortgage origination, brokerage servicing and securitization, in class 36 (U.S. CLS.100, 101 and 102).”

The date of first use of this trademark in commerce was April 18, 2005. On this date, the Complainant launched and started promoting its “www.beardirect.net” website to offer financial services, namely, providing internet-based mortgage banking services for customers and clients to view and input information relating to various financial services, namely, mortgage origination, brokerage servicing and securitization. A copy of a screen shot of the Complainant’s website “www.beardirect.net” has also been provided to the Panel.

Subsequently, on or around July 6, 2006 (according to the Complainant), or May 31, 2006 (according to the Respondent), the Respondent acquired the disputed domain name.

 

5. Parties’ Contentions

The Panel summarizes below those allegations which are particularly pertinent to the present decision.

A. Complainant

A1. Identical or confusingly similar

The Complainant argues that the disputed domain name violates paragraph 4(a)(i) of the Policy because the domain name is identical to the trademark in which the Complainant has prior rights, citing in support a number of decisions under the Policy including The Hamlet Group, Inc. v. James Lansford, WIPO Case No. D2000-0073.

A2. Rights or legitimate interests

The Complainant submits that the Respondent has not demonstrated any legitimate interest in the disputed domain name. Internet users, who are interested in doing business with the Complainant and input the trademark BEAR DIRECT in search of such business, are automatically sent to the Respondent’s website. This website claims to conduct a financial services business under the mark BEAR DIRECT and offers links to various sites providing mortgages and similar financial services. Copies of printouts of “www.beardirect.com” and links listed on “www.beardirect.com,” both viewed on December 27, 2006, have been provided to the Panel.

The Complainant argues that such use of the disputed domain name, however, is likely to mislead Internet users and, more importantly, cause the Complainant’s customers (prospective and actual) to believe that the Respondent, and its “business,” is somehow associated with the Complainant.

The Complainant further contends that since the Respondent is merely using the domain name <beardirect.com> to redirect internet users to its website, it cannot establish that it has a legitimate interest in this domain name, citing in support decisions including Alta Vista Company v. O.F.E.Z., WIPO Case No. D2000-1600.

A3. Registered and is being used in bad faith

The Complainant submits that the domain name should be considered as having been registered in bad faith because the Respondent either knew or should have known of the Complainant’s prior rights to the trademark. According to Complainant, the Respondent acquired the domain name on or around July 6, 2006, after the Complainant started using the mark in commerce and filed for registration of the mark. Among other things, the Respondent’s website redirects lenders to a mortgage and loan provider “www.low.com.” Thus, the Complainant argues, since the Respondent’s business purports to be in the same industry as the Complainant’s website at “www.beardirect.net” (i.e., mortgages and financing), and since the creation of “www.beardirect.net” was a publicly announced event, the Respondent knew that BEAR DIRECT is the Complainant’s trademark.

The Complainant further contends that, although the Respondent may argue that the Respondent did not have actual knowledge of the trademark use and trademark filing at the time the Respondent acquired the domain name, this argument fails. The Complainant points in support of this to a number of previous panel decisions including J. Crew International Inc. v. crew.com, WIPO Case No. D2000-0054.

The Complainant therefore submits that the Respondent is using the domain name in bad faith. It is further argued by the Complainant that the use of a domain name which is identical to an existing registered trademark to direct Internet traffic to websites in which the Respondent has a financial interest and which have no connection with the trademark owner cannot constitute a “bona fide offering of goods or services” or a “legitimate non-commercial or fair use of the domain name.” (Charles Schwab & Co, Inc. v. Polanski, WIPO Case No. D2001-0959). Here, the Complainant contends, the Respondent fails to use the disputed domain name other than to transfer Internet users to its website.

The Complainant concludes that since the Respondent does not demonstrate a legitimate interest in the trademark, the Respondent’s sole or primary intention in registering and using the domain name was either to redirect Internet users to its website for commercial gain and/or to attempt to sell the domain name to the Complainant. According to Complainant, such actions establish the Respondent’s bad faith use of the domain name.

B. Respondent

The Respondent contends that when he bought the domain name he had not heard of “beardirect.net”, which according to Respondent is not a famous mark.

The Respondent further states that: “I bought this domain because I thought it would be a good domain for advertising or selling teddy bears, bear meat, bear products (like bear rugs), or anything else that has to do with bears. The sale of teddy bears is a multibillion dollar business; bear hunting is a very popular sport; and bear meat is a delicacy in many countries and cultures, including the United States and China. In fact, bear farms are a booming industry in China, with over 500 farms housing over 8,000 bears. The Chinese have been using bear parts for traditional Chinese medicine for thousands of years.”

The Respondent submits that Complainant does not have exclusive rights to the term Bear Direct, arguing that the words “Bear” and “Direct” are distinct generic terms to which no entity can claim exclusive rights. The Respondent further points to websites at “www.bears-direct.com” “www.teddybearsdirect.com” which Respondent points out sell teddy bears and have been in business for a number of years.

The Respondent further contends that the disputed domain name was originally registered on April 2, 2003, almost two years before Bear Stearns registered <beardirect.net>. The Respondent states that he acquired the domain name on May 31, 2006, nine months before Bear Stearns was granted a service mark for “BearDirect.net” and four months before they were granted a word mark for BEAR DIRECT. The Respondent further states that his purchase of the disputed domain name was reported at “DnJournal.com” in its sale prices for the week of May 29-June 4, 2006, with a sale price of $2,345 for the domain name, providing in support a link to the said article.

The Respondent submits that the “.com” version of most generic words followed by the word “direct” are generally taken (registered), pointing to a number of examples of uses of the word “direct” after a generic word, and stating also that this is one of the most common types of domain names for businesses.

The Respondent further submits that the parking service on which this domain was parked “auto-optimizes” links based on previous searches. The Respondent further claims that it is well established under the Policy that registrants cannot be held responsible for this type of auto-optimization on parked pages. The Respondent states that he “redirected the domain to a different search page as soon as I was made aware of the Complainant’s trademark”, and that the domain now “features a picture of a bear and links to bear related sites.”

The Respondent invokes the protection of the “safe harbor provisions” of the Digital Millennium Copyright Act, which it asserts alsoprotects YouTube and Google from lawsuits, citing in support a link to Wikipedia. The Respondent further states that these provisions require the trademark holder to give fair warning of abuse.

The Respondent further points to the role of “auto optimization” in the functioning of the Internet and search engines. The Respondent further wonders whether the Complainant itself may have been involved in the creation of these search results.

The Respondent states he did not buy the disputed domain name in bad faith and that he never offered to sell the domain.

The Respondent further states that there is no point in having multiple Top Level Domains if the person who owns one generic TLD can take away a domain from the person who owns the same word combination in a different TLD.

The Respondent submits that the use of a common-word domain name in connection with a general advertising links program establishes the Respondent’s legitimate interest and refers to a number of decisions including: Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 NAF. October 8, 2001; Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323; PwC Business Trust v. Ultimate Search, WIPO Case No. D2002-0087; and Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323.

The Respondent further reiterates that and that the domain name could not have been registered in bad faith. The Respondent further assserts that it is well established under the Policy that, where a trademark or service mark is an ordinary English term or phrase, as is the case here, bad faith can only be proven if there is evidence that the Respondent registered the domain name specifically to sell to the Complainant, or that the value of the domain derived exclusively from the fame of the trademark. The Respondent asserts that the Complainant has not presented any proof as to the fame of their mark, and requests that the Complaint be denied.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

The Complainant claims prior rights (often known as “common law” rights) from April 18, 2005, in the commercial use of the trademark BEAR DIRECT, which claimed trademark rights the Panel notes predate the Respondent’s acquisition of the disputed domain name on May 31, 2006. Regardless of the date of accrual of common law rights, the Complainant has established rights in the mark BEAR DIRECT, which was registered with the United States Patent and Trademark Office (USPTO) on September 19, 2006. The Respondent argues that “[t]he single words ‘Bear’ and ‘Direct’ are distinct generic terms to which no entity can claim exclusive rights and, when used together, the terms are still generic.” However, the USPTO has, in fact and in law, recognized the distinctiveness of BEAR DIRECT by granting it registration as a trademark.

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The disputed domain name incorporates entirely and without any modification the registered trademark BEAR DIRECT, which is owned by the Complainant in and for the purposes of its financial services business.

The addition of the suffix “.com” is for registration purposes only and does not provide any distinguishing feature to avoid any confusion for trademark purposes. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. See also Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference.”

In view of the foregoing, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark BEAR DIRECT.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to show that the Respondent was acting in pursuance of rights or legitimate interests when registering the disputed domain name. The Respondent has not been authorized or licensed by the Complainant to use the Complainant’s trademark BEAR DIRECT in the disputed domain name. While the Respondent makes a number of statements regarding potential uses of the domain name, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. While the Respondent indicates that he did include a picture of a bear on the website in response to notice of the current proceedings, the website is evidently not being used either in connection with the sale of teddy bears or indeed of bear meat as envisaged as options by the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

Based on the available evidence, the adoption by the Respondent of a domain name identical to the Complainant’s trademark BEAR DIRECT will in all likelihood lead to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the Respondent’s website and the links there to apparent competitors of the Complainant, with likely consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is an all likelihood taking advantage, for commercial gain, of the good name and reputation of the Complainant and its business and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its business, without any right or legal justification for doing so. Such a situation, namely the incorporation by the Respondent of the Complainant’s trademark BEAR DIRECT in the disputed domain name, implies to Internet users or consumers that the Respondent is in some way associated with and endorsed by the Complainant, which is not, in fact, the case.

While the Respondent states it acquired the disputed domain name on May 31, 2006, the record indicates that the Complainant’s website “www.beardirect.net,” which it launched on April 18, 2005, was a publicly announced event. Also, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites (as in the present case) suggests to this Panel “that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks.”

Also, the Panel is not convinced by the Respondent’s claims that “I bought this domain because I thought it would be a good domain for advertising or selling teddy bears, bear meat, bear products (like bear rugs), or anything else that has to do with bears” given inter alia the extensive financial services content of the Respondent’s website.

Furthermore, the Panel is not persuaded by some of the Respondent’s more hypothetical or general questions raised in the Response. The Panel feels further fortifed in its decision given the Respondent’s evident familiarity with domain name processes and obvious Internet savvy.

In general, the Panel also agrees that a registrant cannot hide behind so-called search engines or “self-optimizing” arrangements where it obviously benefits from these arrangements. The Panel notes in this respect the recent decision in Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315, in which the panel in a related context observed:

“It is true that the revenue-sharing arrangements made by Respondent left him with no way of knowing in full what advertisements would appear on his website in response to any given visit. He nevertheless failed to take steps to exclude ‘hotel’ as a search term in connection with ‘shangrila’, knowing, as the Panel has found, of Complainant and its mark when he registered the disputed domain name and made those arrangements. It may well be that the advertisers seeking to divert customers from Complainant to other hotels are the principal culprits responsible for the diversion of Internet traffic intended for Complainant. But Respondent was knowingly complicit, for commercial gain, in the arrangements whereby such diversion took place and did nothing to stop it.”

Based on the foregoing the Panel concludes that the Respondent in this case has registered and is using the disputed domain name 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 <beardirect.com> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: April 4, 2007