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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Urb, Inc. v. SR

Case No. D2008-0124

1. The Parties

The Complainant is Urb, Inc., of Lincolnwood, Illinois, United States of America, represented by Schiff Hardin LLP, United States of America.

The Respondent is SR, of Lincolnwood, Illinois, United States of America, represented by Offices of Catherine Simmons-Gill, LLC, United States of America.

2. The Domain Names and Registrars

The disputed domain name <urbinc.com> is registered with GoDaddy.com, Inc. The disputed domain name <urbonline.com> is registered with Blue Razor Domains.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2008. On January 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On January 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both domain names and providing the contact details. Subsequently, GoDaddy.com, Inc. clarified that the disputed domain name <urbonline.com> is registered with an affiliated registrar, Blue Razor Domains. 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 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Response was filed with the Center on February 21, 2008.

The Center appointed William R. Towns as the sole panelist in this matter on March 3, 2008. 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 and the Respondent are both in the business of buying and selling distressed real properties in the Chicago, Illinois area. The record reflects that between 1999 and August 2006 the Parties shared offices and engaged in joint marketing efforts, although the Parties disagree as to the nature of their business relationship during this period. According to the Complainant, the Respondent and the Complainant shared offices for the purposes of joint marketing efforts respecting the Complainant’s real estate business. According to the Respondent, the Complainant and the Respondent formed a joint venture in 1999 in order to promote each of their similar but separate businesses through a unified advertising and marketing plan. ¹

The Respondent registered the disputed domain names <urbinc.com> and <urbonline.com> on June 28, 1999, and June 3, 2005, respectively, during the period of the Parties’ association as described above. The Complainant asserts common law rights in URB INC as a trademark of service mark.² The Complainant maintains that the Respondent at most possessed a limited and implied license to use the URB INC. mark and the disputed domain names only for so long as their business association continued. The Respondent maintains that the Complainant never used URB INC. as a trademark prior to the Parties’ joining forces in 1999, and that the URB INC. mark was used between 1999 and August 2006 solely in relation to the alleged joint marketing venture.

As noted above, the Complainant and the Respondent both are in the real estate business in the Chicago, Illinois area. Since the termination of their business association in August 2006, the Complainant and the Respondent have competed directly with each other. At present, the Respondent is using the disputed domain names <urbinc.com> and <urbonline.com> to redirect Internet visitors to the Respondent’s “www.startrehab.com” website.

5. Parties’ Contentions

A. Complainant

As discussed under the preceding heading, the Complainant claims to be the owner of exclusive trademark or service mark rights in URB INC., which the Complainant contends it has used in relation to its real estate business for more than 20 years. According to the Complainant, the Respondent had only a limited license to use the URB INC. mark, and only while the Parties were sharing offices, as the sole purpose for the office sharing arrangement was to jointly market the Complainant’s real estate business. The Complainant contends that any such oral or implied license conveyed to the Respondent was terminated in August 2006. As such, the Complainant contends that the Respondent has established no rights or legitimate interests in the disputed domain names, which the Complainant maintains are identical or confusingly similar to its mark.

According to the Complainant, the Respondent was aware of the Complainant’s rights in its URB INC. mark when the Respondent registered the disputed domain names, which the Complainant contends that the Respondent did in bad faith in order to take unfair advantage of the goodwill associated with the Complainant’s mark. Further, the Complainant contends that the Respondent, a direct competitor, is using the disputed domain names in bad faith to redirect Internet visitors to the Respondent’s website in order to exploit and profit from the Complainant’s trademark rights.

B. Respondent

As noted above, the Respondent contends that between 1999 and August 2006 the Parties were engaged in a joint venture under which they promoted their similar but separate businesses through a unified advertising and marketing plan. According to the Respondent, that plan included the registration and use of the disputed domain names, and the Respondent contends that the Complainant was fully aware of the Respondent’s registration of the domain names and never objected to the Respondent’s ownership or use of the domain names until late 2007.

The Respondent contends that the Complainant had never used the “Urb Inc.” trade name as a trademark or service mark prior to the formation of their joint venture, and that the URB INC. mark was used between 1999 and August 2006 to simultaneously advertise and market (in the same promotional materials) the real estate businesses of both entities. According to the Respondent, the URB INC. mark is either owned by the Respondent or was owned by the Parties’ joint venture that existed between 1999 and August 2006, during which period the Respondent registered both of the disputed domain names. Accordingly, the Respondent concludes that is has rights or legitimate interests in the disputed domain names.

The Respondent further maintains that, even assuming arguendo the Complainant at all material time had exclusive rights in the URB INC mark, the Complainant has conceded that the Respondent was operating under a license when it registered the disputed domain names, and did so under color of a legitimate interest in the domain names, such that its registration of the disputed domain names was undertaken in good faith.

The Respondent argues that this case does not present an issue of cybersquatting, but is at worst the subject matter of a contractual dispute. Even were the Panel to view the Respondent’s continued use of the disputed domain names following the termination of the agreement between the Parties to be in bad faith, the Respondent notes that the Policy also requires proof of bad faith conduct at the time of registration. According to the Respondent, there is no evidence in the record to support the Complainant’s claim of bad faith registration and use.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves contractual and commercial disputes beyond the scope of the Panel’s limited jurisdiction under the Policy. The Policy was adopted to deal with the problem of cybersquatting – that is, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel has jurisdiction to address under the Policy are relatively simple and straightforward. This proceeding is a summary one, without the benefit of confrontation of the witnesses, or in-person hearing. Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.

At the center of the dispute in the present case is a fundamental disagreement between the Parties regarding the terms of a contract that both sides acknowledge was reached at sometime in 1999, and which both Parties operated under until some time in August 2006. As reflected in the record, at issue is whether this agreement embodied a true joint marketing venture entered into between two “similar but separate businesses” as the Respondent alleges, or whether, as the Complainant asserts, it was merely an office sharing arrangement under which the Parties undertook joint marketing efforts in promotion of the Complainant’s ongoing business. Implicit in this dispute are further questions regarding trademark usage and unfair competition that necessarily rely on the application of commercial law for resolution.

Ultimately, the domain name dispute in this case is ancillary to the contractual and commercial disputes between the Parties as reflected in the record. See Jason Crouch and Virginia McNeill v. Clement Stein, supra. These disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy. See Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist

Date: March 17, 2008

¹ Response, Exh. A (Affidavit of Gregory R. Bingham). The record reflects that Bingham does business as StartRehab, Inc., for which “SR” is said to be an acronym. Similarly, “URB” is said to be abbreviation of the last name of the Complainant’s president, Brian Urbanowski.

² The Complainant claims exclusive rights to the trademarks URB INC. and URB INC. and design. The record does not reflect that the Complainant has registered either mark. The Complainant also asserts that is has used URB INC. as a mark for more than twenty years, but has submitted no evidence reflecting such use. The Panel notes that the Complainant filed in August 2006 an application to register URB INC. and design with the USPTO (S/N 78/953327), which the Complainant subsequently abandoned. (Response, Exh. C).