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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banco do Brasil S.A. v. The Universal Kingdom, LLC

Case No. D2008-0389

 

1. The Parties

The Complainant is Banco do Brasil S.A. Brasнlia, Brazil, represented by Matos & Associados, Brazil.

The Respondent is The Universal Kingdom, LLC, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bb.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2008. On March 12, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 12, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 March 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response April 16, 2008. The Response was filed with the Center April 16, 2008.

The Center appointed Adam Taylor, Gabriel F. Leonardos and W. Scott Blackmer as panelists in this matter on May 23, 2008. 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.

 

4. Factual Background

The Complainant was founded 1808 in Brazil by Dom Joгo VI the king of Portugal, when Brazil was a vice-kingdom of Portugal. The Complainant was the first bank to operate in Brazil is now the largest Brazilian financial institution, serving every segment of the financial market with 24.4 million customers and some 82,000 employees. It has more than 4,000 branches and 40,000 electronic service points in Brazil as well as 40 branches in 22 other countries.

The Complainant owns the Brazilian trademark 815 796 820 dated July 18, 1995 for BB (word) in classes 20, 36 and 70, as well as the Brazilian trademark 006 228 925 dated February 10, 1976 for a stylized design which the Complainant describes as “BB” in class 36.

The Complainant also owns the United States trademark 1,937,080 dated November 17, 1994, for the same stylized design as Brazilian trademark 006 228 925, in class 36 and which is described as “two stylized interlocking lower case “B”s”.

The Respondent bought the disputed domain name in 2002 for $40,100.

As of February 28, 2008, the disputed domain name resolved to a website with sponsored links relating to books.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Throughout its 198 years of existence the Complainant has continuously and extensively advertised and promoted its BANCO DO BRASIL mark in numerous communications media throughout Brazil and other countries.

Since at least 1971, the Complaint has also used the mark BB to identify its financial and banking services. The Complainant also uses its BB mark on its websites at “www.bb.com.br” and “www.bancodobrasil.com.br”.

The Complainant has developed substantial goodwill and name and brand recognition in its BB mark, based on its long and extensive use of this mark.

The disputed domain name is confusingly similar in appearance, pronunciation and sound to the Complainant’s BB mark. The only difference the addition of “.com” which does not distinguish the domain name from the Complainant’s BB mark.

Rights or Legitimate Interests

To the best of the Complainant’s knowledge and based on Internet research, the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services as it is solely used to host a web site containing links to other commercial web sites. UDRP cases say that the use of a disputed domain name to redirect Internet users to websites unrelated to the Complainant’s mark where the respondent presumably receives a referral fee for each misdirected Internet user, is not a bona fide offering of goods or services as contemplated by the Policy.

To the best of the Complainant’s knowledge and based on Internet research, the Respondent is not commonly known or identified by the name BB. The Respondent does not operate a business or other organization commonly known as BB or offer any goods or services under the BB mark.

The Complainant conducted Internet searches but did not find any indication showing that the Respondent has acquired trademark or service mark rights for the BB mark. An extensive trademark use and registration investigation service shows no use of this mark by the Respondent but that the Respondent owns trademark registrations in the United States and Canada for UNIVERSAL KINGDOM and therefore unrelated to the BB mark.

Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s BB mark or to apply for or use any domain name incorporating the BB mark.

Registered and Used in Bad Faith

The Respondent does not conduct any legitimate commercial or noncommercial business under the BB mark. A person who visits the site at the disputed domain name sees only a page that links to several commercial websites, presumably for the Respondent’s commercial benefit through the earning of click-through fees. By parking the disputed domain name, the Respondent profits from each visit whereby it receives a certain amount of money according to the number of visits.

Based on information from the web site “Alexa.com”, the most visitors to the website at the disputed domain name come from Brazil, that is, 40.5%. This is clear evidence that the disputed domain name is diverting consumers away from the official site of the Complainant.

The use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to several different domain names represents bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Furthermore, the Respondent has registered domain names including well-known marks of third parties. The Respondent is the registrant of the domain names <harvard.us>, <harvardcollege.com> and <eharvard.us>. HARVARD and HARVARD COLLEGE are registered service marks in the United States in the name of the President and Fellows of Harvard College. Several panels have found bad faith use and registration of domain names under these circumstances. A person who visits the above sites sees only a page that links to websites related to Harvard University and Boston hotels, also presumably for the Respondent’s commercial benefit through the earning of click-through fees.

In addition, the Respondent’s passive holding of the domain name <bb.com> constitutes bad faith registration and use of the domain name in accordance with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. A visitor to the site at the disputed domain name may conclude that it is related to the Complainant. Also, that person may then search the whois database and assume that the Respondent is affiliated with the Complainant.

The Respondent is diverting consumers away from the official site of the Complainant and making it difficult for the Complainant’s customers and the general public to locate the Complainant’s official web site, thereby disrupting the Complainant’s business.

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line locations by directly and involuntarily linking users to web sites not related with the Complainant, creating a likelihood of confusion with the Complainant’s BB mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites or locations or products or services on the Respondent’s web site.

The Respondent’s use of the disputed domain name is diluting and weakening the unique and distinctive significance of the Complainant’s BB mark. The use could tarnish the Complainant’s BB mark by giving the impression that the Respondent is affiliated with the Complainant.

If the Respondent sells the disputed domain name to a competitor of the Complainant, that competitor of the Complainant could likewise use the disputed domain name to disrupt the business of the Complainant and cause a substantial likelihood of confusion and substantial actual confusion.

The Respondent’s use of a domain name identical, and therefore confusingly similar to, the Complainant’s BB mark has caused, and will continue to cause, serious and irreparable injury and damage to the Complainant and to the goodwill associated with the Complainant and its BB mark.

B. Respondent

Identical or Confusingly Similar

The Complainant bears the burden of showing, at the outset, that it owns BB as a trademark. The Respondent observes that the evidence the Complainant has submitted to show its use of “BB” as a trademark does not do so. Instead, it demonstrates use of a figure-8 knot-shaped logo. This is intended to be a fanciful rendering of two interlocking lowercase letters “b”, but this is at best far from obvious even after a close inspection of the logo. In any event, the Complainant has offered no evidentiary or legal support for the proposition that such an abstract depiction would place others on notice that it claims exclusive trademark rights in the designation BB.

Rights or Legitimate Interests

The Respondent, as part of its business, routinely registers short or generic domain names that it perceives to have value independent of any third party trademark interest (e.g., <1r.com>, <sopsyched.com>, <megastardom.com>). In 2002, as part of this business, the Respondent decided to acquire the disputed domain name in an eBay auction from an entity that had been using it for the online “BiblioBytes” literary website. The purchase price was $40,100. The Respondent did so because of the domain name’s unique value as a business asset.

Even among the Respondent’s other short and generic domain names, the disputed domain name has special inherent value because (1) the “root” (i.e., the portion prior to .com) is just two letters long, and (2) it is one of only 26 possible “twin-letter” .com domain names (i.e., comprised of just one letter, repeated), an extraordinarily scarce commodity among the millions of possible domain names.

Numerous UDRP decisions have acknowledged that short domain names, like generic domain names, have commercial value independent of any trademark value, as they are easy for Internet users to remember and type into their browsers when searching for a website.

The Respondent’s interest in the disputed domain name is monetizing this inherently valuable asset lawfully, by seeking to resell the disputed domain name, by using the disputed domain name in connection with permitted revenue-generating sites, and possibly by the Respondent’s own use of the disputed domain name in connection with a commercial website. These have all been recognized as lawful uses supporting a legitimate interest where, as here, the Respondent has not targeted the Complainant.

It is well-established that, because short domain names (like generic ones) have inherent value independent of anyone else’s trademark rights, acquiring such domain names for the purpose of resale as part of a business is a legitimate activity does not constitute cybersquatting, as long as the respondent has not targeted a trademark owner.

The Respondent has entertained numerous offers for purchase which have reached as high as $175,000 – indicating that the Respondent’s investment has already increased in value by more than 400% in only six years (although the Respondent has declined all such offers to date). Its interest in the disputed domain name for potential sale is legitimate under the Policy.

The use of a domain name in connection with pay-per-click sites – the use currently being made of the disputed domain names here is legitimate under the Policy as long as the Respondent does not “target” the Complainant. The pay-per-click website posted by the Respondent focuses solely on books-related sites (link categories include “Books”, “Used Textbooks”, “Second Hand Books” and “Books Online”); there are no links to any banking websites, any Brazilian websites, or any other websites remotely targeting the Complainant or its business.

The Respondent is considering using the disputed domain name in connection with a baseball-related website – specifically, an interactive website geared to teaching baseball strategy to young baseball players. In connection therewith (and long before the Complainant asserted its claim), an officer of the Respondent registered other (complementary) “BB”-inclusive domain names that could be used with such a site, including <baseballbug.com> and <bbsim.com> (short for “baseball simulation”), and the Respondent has researched developers for such a site and consulted with a coach with relevant expertise regarding possible collaboration with respect to such a site. This use of the disputed domain name is plainly legitimate.

Registered and Used in Bad Faith

Moreover, the evidence is incontrovertible that the Respondent was unaware of the Complainant or its alleged ownership of the “BB” mark when the Respondent purchased the domain name, or at any other time prior to the institution of this proceeding. Thus, the Complainant has failed to make the requisite showing of bad faith under the Policy.

It is well-established that, to support of finding of bad faith under the Policy, a complainant must prove that the respondent was intentionally “targeting” the complainant. The Complainant has not offered a shred of evidence to support its contention that the Respondent targeted the Complainant by its purchase of the disputed domain name. Indeed, all evidence is to the contrary.

The Respondent was completely unaware of the existence of the Complainant Banco do Brasil. This assertion is also supported by the fact that, as set forth in the Complainant’s own evidentiary submission, bank accounts with the Complainant “are intended for residents (temporary or permanent) of Brazil” and not residents of other countries. In fact, the Complainant does not even offer an English-language version of its banking services website. Thus, there is no reason that the Respondent, a United States company, would be aware of the Complainant. And it is well established that, without proof that a respondent knew or should have known of a complainant and its use of the mark in issue, bad faith cannot be found.

Even if at the time the Respondent acquired the disputed domain name it had been cognizant of the Complainant (which it was not), the Complainant still could not establish bad faith because the Respondent was unaware of the Complainant’s alleged use of or rights in the mark “BB”. This is supported by the Complainant’s own documents, which show that the Complainant uses the figure 8 logo. It is difficult even to discern “BB” from this logo. Therefore, even in the unlikely event that representatives of the Respondent, a United States company, encountered the logo, the Respondent would not have viewed it as a “BB” mark or drawn an association between the Complainant and the “BB” letter-mark.

The Complainant’s suggestion that it is known by the “BB” letter-mark is disingenuous. A search for “BB” on Google yields over two million hits, and a review of the first 100 hits (i.e., 10 Google results pages) shows no references to the Complainant. The search turned up numerous other businesses that use the designation “BB”, further undermining any claim that “BB” is exclusively associated with the Complainant. Moreover, even within the Complainant’s own industry, there are numerous other institutions with the initials “BB” such as Barclays Bank and Bank of Beijing. And there are literally hundreds of third party trademark applications and registrations in the United States alone for “BB” and other “BB”-formative marks both within the banking industry and in many other fields.

In addition to the numerous businesses for which BB may be an acronym or trademark, the disputed domain name has innumerable generic uses (e.g., as an abbreviation for common terms and phrases such as Business to Business, Broadband, Bed & Breakfast, Bulletin Boards, Basketball, Baseball, among many others), and could also be used as a vanity e-mail address for the numerous individuals with the initials BB. Indeed, the company from which the disputed domain name was purchased expressly noted such possible uses in its eBay advertisement for the disputed domain name. Thus, there is no basis for speculating that the Respondent had the Complainant in mind – let alone that the Respondent was “targeting” the Complainant – when the Respondent purchased the disputed domain name.

None of the advertising links on the Website relate to the Complainant or the Complainant’s banking business. They all pertain to books.

The Complainant cites Telstra Corporation supra for the proposition that passive holding of a domain name is supportive of bad faith. The Respondent is not passively holding the domain name. Moreover, the panelist in Telstra was careful to note that passive holding alone is not a basis for a bad faith finding. The specific circumstances in that case included a false name and address information, failure to respond to the complaint, and registration of a domain name incorporating a fanciful (i.e., invented) mark (TELSTRA) that was an extremely famous mark within the geographical region of both the Complainant and the Respondent. None of those elements are present here. Indeed, cases after Telstra have noted that for passive holding to support a bad faith finding, an important element is that the complainant’s mark is sufficiently well known such that a registrant might reasonably be inferred to have registered an identical or confusingly similar domain name in the expectation of taking advantage of the trademark holder. In this case, there is no basis for inferring that the Respondent registered or used the disputed domain name with the expectation of taking financial advantage of the Complainant.

The Complainant’s effort to conjure bad faith from the Respondent’s use of the disputed domain name for a “click-through advertisement” page is unavailing. Such use does not support a finding of bad faith absent a showing that the Respondent is targeting the Complainant.

The Alexa.com statistics do not establish bad faith. This statistic is both misleading and irrelevant. As Alexa clearly disclaims on its website: “Traffic Rankings of 100,000+ [i.e., ranked in 100,000th place or lower in number of ‘hits’ or visits to the website] should be regarded as not reliable because the amount of data we receive is not statistically significant.” The Respondent’s website has an extremely low traffic ranking of 267,545th, meaning the number of Alexa registered users that visit the website is too small to be statistically significant and the reported statistics are inherently unreliable.

Moreover, the alleged statistics do not indicate what proportion of the Brazilian visitors actually click-through to other sites as would be required in order to yield click-through revenue. Indeed, there is no evidence suggesting that someone seeking the Complainant’s banking website (which is in Portuguese) would take a sudden interest in links to English language book-related websites. This further undermines the Complainant’s claim that the Respondent is benefiting from the Complainant’s customers.

The Complainant alleges that the Respondent could sell the disputed domain name to a competitor. However, the complaint contains no allegation that the Respondent has sought to sell the disputed domain name to a competitor of the Complainant – and in fact, the Respondent has never sought to do so. Given the absence of any evidence that the Respondent has ever sought to sell the disputed domain name to a competitor of the Complainant at any point during the six years since acquiring the disputed domain name, there is no factual basis whatsoever for inferring that the Respondent intends to do so.

Finally, the Complainant points to three domain names owned by the Respondent that include the term HARVARD. The Respondent registered these domain names because an officer of the Respondent who is a Harvard University alumnus was considering posting a website related to the university. The Respondent has never sought to sell these domain names, nor has it attempted to monetize them by linking to pay-per-click websites or otherwise. The Respondent recently discovered that the registrar for these domain names linked them to pay-per-click sites by default. However, the Respondent received no revenue from this, and took steps to terminate the link to such sites as soon as it learned about this. This clearly is not a “pattern of conduct”, let alone a pattern of conduct that could provide the basis for finding that the Respondent has acted in bad faith towards the Complainant with respect to the disputed domain name.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns a Brazilian word trademark for “BB”. The Panel concludes that the disputed domain name is identical to a trademark in which the Complainant has rights, disregarding the domain name suffix. The Panel therefore finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent says that it is a business which deals in generic domain names. This claim is supported by a list of some 49 domain names owned by the Respondent exhibited to the Complaint, virtually all of which are generic.

The Respondent says that it considered the disputed domain name to be particularly attractive as a short two-letter and twin-letter (i.e., one letter repeated twice) domain name. That was why it was prepared to pay some $40,000 to acquire the domain name from its previous owner. The Respondent’s purpose was allegedly to resell the name, to monetize it on revenue generating websites and/or to use it itself in connection with a baseball-related website.

It appears to be accepted by UDRP panels (see, e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 and the cases cited therein) that domain resale and use of a domain name to publish advertising links may well be legitimate business enterprises in the absence of evidence that the name was selected because of correspondence to a trademark. A majority of this Panel agrees with this approach. This reference to the Respondent’s rationale for selection of the disputed domain name indicates that the issue of legitimacy in a case such as this largely hinges on bad faith, which is better addressed below in connection with the third element of the Policy.

Accordingly, it is unnecessary to express a concluded view on the somewhat narrow issue as to the legitimacy of the use of pay-per-click advertising for subject matter unrelated to the term “bb”, namely books.

C. Registered and Used in Bad Faith

There is nothing on the record which indicates that the New York-based Respondent was likely to have contemplated the Complainant’s trademark when it acquired the disputed domain name in 2002. For example, there is no evidence of use of the domain name for sponsored links to Brazilian financial-related websites.

No inference concerning the Respondent’s knowledge can be drawn from the nature of the disputed domain name, given that it consists of the short, commonplace acronym “bb”. A majority of the Panel rejects the surprising assertion by the Complainant that bb is uniquely associated with its financial and banking services. As one might expect, a glance at a Google search produced by the Respondent shows numerous diverse uses of that term.

There is nothing in the Complaint or exhibits suggesting that the Complainant’s BB mark has any degree of reputation in the United States and even the submitted evidence as to use in Brazil is rather thin. There is little more than a few leaflets / brochures bearing a logo with the stylised name “Banco Do Brasil” plus this image:

A majority of the panel finds this a somewhat abstract representation, which is not on its own easily identifiable as two interlocking lower case “b”s.

Can bad faith exist in the absence of contemplation by the Respondent of the Complainant’s trademark?

On the question of constructive notice, the helpful WIPO Overview of WIPO Panel Views on Selected UDRP Questions on WIPO’s website states at paragraph 3.4: “Most panels have declined to introduce the concept of constructive notice into the UDRP. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.”

In line with the normal approach of UDRP panels, the majority of this panel declines to apply constructive notice in this case. The majority considers that it would stretch the UDRP beyond the breaking point to find bad faith on the basis of presumed notice of, or (as put by the dissenting Panelist) failure to observe reasonable diligence to discover, the Complainant’s United States trademark consisting of the abstract representation shown above, notwithstanding that it is described and searchable online as “BB”.

Even if the Respondent has searched and found that trademark, would that necessarily have meant that the Respondent had acted in bad faith? As mentioned above, the disputed domain name consists of a short, commonplace term which was entirely capable of being used without infringing the Complainant’s (heavily stylized) trademark. Indeed, evidence produced by the Respondent shows that there are dozens of other “BB” marks on the USPTO register, many of which are for the standard characters “BB” – unlike the Complainant’s mark.

The majority also disagrees with the view of the dissenting Panelist that the Respondent had a duty to search trademark registers in Brazil and other of the “world’s major economies”. Such a conclusion is even further out of line with the usual approach of UDRP panels which is to ground bad faith on contemplation by a respondent of the complainant’s rights. According to the WIPO Overview mentioned above, those very few UDRP cases which did apply constructive notice were limited to situations where both trademark and registrant were located in the United States.

The dissenting Panelist relies on the decision in Media General Communications, supra which was in fact written by one of the majority Panelists in this case. That case can, however, be distinguished because both parties were located in the United States and because the domain name (<wcmh.com>) and trademark for WCMH were materially different to those in issue here, not least because arbitrary four letter strings starting with “W” are well-known in the United States as denoting radio and television call signs, many of which are also trademarked by the associated broadcasters.

Turning to the Complainant’s submissions, it first attacks the legitimacy of the Respondent’s profiting from pay-per-click advertising on the website. But, as stated above, such activity is not, of itself, a conclusive indicator of bad faith. It depends on the circumstances and, in particular, whether or not the domain name was selected by reference to a trademark. For reasons already explained, a majority of the Panel is not convinced that the domain name was selected by reference to the Complainant’s trademark.

The Complainant relies on evidence from Alexa.com that the majority of visitors to the site (40.5%) are from Brazil and says that this demonstrates that the disputed domain name is diverting customers from the Complainant’s main site. However, the Respondent invokes Alexa’s disclaimer that sites with traffic ranking below 100,000 should not be regarded as reliable because the amount of data received is not statistically significant. The Respondent’s site is ranked 267,545th. In any case, this data is of little benefit in the absence of some indication of total visitor numbers. For all that one knows, the site may have had only a handful of visitors in the relevant period (which indeed might have included the Complainant or its lawyers).

Even if there were in fact significant Brazilian traffic, and even if there were relevant confusion (notwithstanding use of the site for book-related links), that would not, however, assist the Complainant in the absence of contemplation by the Respondent of the Complainant’s trademark on acquisition of the disputed domain name.

The Complainant observes that the Respondent owns the domain names <harvard.us>, <harvardcollege.com> and <eharvard.us> and that HARVARD and HARVARD COLLEGE are registered service marks in the United States in the name of the President and Fellows of Harvard College. The majority of the Panel is skeptical of the Respondent’s explanation that these domain names were registered because an officer of the Respondent who is a Harvard University alumnus was considering posting a website related to the university and that the Respondent is not responsible for the pay-per-click links on those sites which were created by the registrar by default. However, these Harvard domain names are only three out of a list of 49 domain names owned by the Respondent, most of the remainder being clearly generic. And the disputed domain name in this case is materially different to the Harvard domain names which are obviously referable to a third party trademark. The majority of the Panel does not consider that the disputed domain name, consisting of a brief, commonplace acronym, forms part of pattern of conduct with the Harvard domain names such that the Respondent has necessarily acted in bad faith in relation to the former.

The Complainant says that the Respondent’s passive holding of the disputed domain constitutes bad faith registration and use of the domain name in accordance with Telstra Corporation supra. However, this is not a case of passive holding as there is no dispute that the Respondent has used the disputed domain name for a website. It is difficult to see the relevance of the Telstra decision in these circumstances.

The Complainant says the Respondent is diluting and weakening the unique and distinctive significance of the Complainant’s BB mark and that this could tarnish the mark by giving the impression that the Respondent is affiliated with the Complainant. As stated above, the majority of the Panel does not accept that the Complainant’s mark is “unique” but in any case, the Panel is here concerned with bad faith and not with trademark infringement concepts such as tarnishment or dilution.

Finally, the Complainant says that if the Respondent sells the disputed domain name to a competitor of the Complainant, that competitor could use the disputed domain name to disrupt the business of the Complainant and cause a substantial likelihood of confusion and substantial actual confusion. This is, however, speculation and it is also irrelevant as the Panel is concerned with whether or not the present the Respondent has in fact registered and used the domain name in bad faith and not with the hypothetical scenario postulated by the Complainant, which would have to be judged on its own merits (whether under the UDRP or otherwise) if it ever occurred.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: June 6, 2008

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DISSENTING OPINION

 

1. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights;

(ii) that the Respondent has no rights or 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

The Complainant owns a device mark registration in Brazil for a stylized mark of two letters “b” interlocked that was filed on March 23, 1971 and is currently registered under No. 006 228 925 before the Brazilian Trademark Office (“BTO”). However, in the certificate of registration submitted by the Complainant such registration appears as a “device mark” and, in fact, in the BTO database such registration appears as a “device” mark. Thus, it is impossible to search for the two letters “b” in the Internet. As a consequence thereof, for all legal purposes such registration cannot be considered to cover a trademark formed by two letters “b”.

The Complainant owned the United States trademark Registration No. 1,938,429 for BB (Stylized) filed with the United States Patent and Trademark Office (“USPTO”) on November 17, 1994 and registered on November 28, 1995, indicating March 23, 1971 as the date of the first use in commerce in the United States. Although this registration was cancelled, another registration was issued and it is currently in force, under Registration No. 1,937,080 to cover “banking services”, in International Class 36. Both such registrations refer to the same aforementioned stylized mark of two letters “b” interlocked and in both cases the description of the trademark appear at the USPTO web site with “BB” mentioned in the description of the word mark. Thus, the Complainant’s trademark can be easily searched under “BB” at the USPTO web site on the Internet. As a consequence thereof, for all legal purposes such registrations must be considered to refer to the BB trademark.

The Complainant also presented evidence that it uses the trademark BB in Brazil since the nineteenth century and that it owns a word mark (with no stylized letters) registration for trademark BB in Brazil filed on September 25, 1990 and registered on July 18, 1995 under No. 815 796 820 as well as dozen other registrations in Brazil and four registrations in the United States for “BB”-containing trademarks.

The domain name registered by the Respondent and discussed herein is identical to the trademark BB owned by the Complainant, and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The disputed domain name was previously registered by BiblioBytes, a company that was engaged in selling books through the Internet and, as such, clearly had legitimate interests in the domain name <bb.com>. The Respondent purchased such domain name in an E-Bay auction on February 10, 2002, i.e., long after the Complainant had acquired rights over the trademark BB both in Brazil and in the United States.

The Respondent has no business at all under the domain name <bb.com>. The Respondent simply runs a “pay-per-click” (PPC) page under such domain and affirmed that its interest in the domain relies on the fact that: “(1) ‘the root’ (i.e., the portion prior to .com) is just two letters long, and (2) it is one of only 26 possible ‘twin-letter’ .com domain names (i.e., comprised of just one letter, repeated), an extraordinarily scarce commodity among the millions of possible domain names”.

However, this Panelist understands that the inherent value of the domain name is insufficient of itself to give to the Respondent rights or legitimate interests to the domain name. The UDRP was not made to afford protection only to trademarks formed by terms with no other value than their trademark character. There are several terms with inherent value, including generic terms, that have not been used by its registrants for an actual business purpose and that have been found to be held by such registrants without rights or legitimate interests, such as the term “trip” as decided in Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, in the dispute related to the domain name <www-trip.com>.

None of the conditions established at paragraph 4(c) of the Policy that could justify the Respondent’s rights or legitimate interests are present, as the Respondent (i) has not shown 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; nor (ii) has the Respondent been commonly known by the domain name; nor (iii) does the Respondent make a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

In fact, this Panelist finds that Respondent is misleadingly diverting consumers from the Complainant, as the Complainant has been known as “BB” since the nineteenth century, it is the oldest and largest Brazilian bank, and it has shown that 40.5% of the Respondent’s traffic comes from Brazil. The Respondent’s defence to such a high percentage (informed by the web site ALEXA.COM), interestingly, is not to deny this unusual high percentage of visitors from Brazil, but rather to inform that ALEXA.COM admits that in web sites with a low number of visits (as the Respondent’s) the statistics are not relevant and are unreliable.

The Respondent’s reply that it does not divert the Complainant’s consumers from the Complainant is not credible, not only because the Respondent fails to deny that it receives a large percentage of visitors from Brazil, but also because it is not conceivable, in view of the large fame of the BB trademark of the Complainant that the Complainant’s customers would not expect to find the Complainant on the Internet using the obvious domain name <bb.com>.

Thus, this Panelist finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The first registration of the disputed domain name by BiblioBytes was not made in bad faith as that company operated a business of selling books through the Internet that did not compete with the Complainant. Moreover, such company had adopted a name formed by two words starting with the letter “b” that was not confusingly similar to the Complainant’s. Thus, the original registration of the domain <bb.com> by BiblioBytes was made in good faith.

The matter at dispute in this Complaint is whether the Respondent acted in bad faith when purchased the domain name on February 10, 2002, i.e., long after the Complainant had acquired rights over the trademark “BB” both in Brazil and in the United States.

The Policy requires that bad faith of the registrant must be shown for a complaint to be successful, but the Policy does not define what is to be considered bad faith, or not. However, the Policy does provide the following guidance on finding bad faith in its paragraph 4(b):

“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

As seen, the parameters provided by the Policy are “without limitation”. Thus, even if one admits that a registrant acquired a domain name and uses it without intent to attract Internet users to its web site – something highly debatable in this proceeding, due to the fame of trademark BB from the Complainant – there might be other circumstances that show that a domain name has been acquired and is being used in bad faith.

Therefore, this Panelist shall now focus on the Respondent’s defence according to which when it purchased the domain <bb.com> it was not aware of the Complainant’s trademark and, for such reason, this Complaint should be denied. According to the Respondent, “it is well-established that, to support of finding of bad faith under the Policy, a complainant must prove that the respondent was intentionally ‘targeting’ the complainant”. This Panelist disagrees with such argument and also disagrees that there is any such “well-established” understanding.

On the contrary, whenever a failure of the registrant in its reasonable duty of diligence is observed, such failure can, and should, lead to a finding of bad faith. Although some may see this as a finding of constructive notice, according to which the prior knowledge of a respondent’s trademark is presumed, this Panelist does not believe that such fiction of prior knowledge is needed, inasmuch as bad faith does not mean only the previous knowledge of another party’s rights.

Bad faith is a common legal expression used in many countries and it may signify different things in each country. It is not uncommon that in documents of an international nature (such as the Policy) broad terms be used in order to allow for an easier understanding of the expression in different jurisdictions, as well as to allow some flexibility in the interpretation.

A good example is the use of the expression “honest practices” in Article 10bis(2) of the Paris Convention: “Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.” As everyone knows, what is an “honest practice” may vary from one country to another, or from one field of business to another.

Likewise, depending on the circumstances, bad faith may in some jurisdictions not be considered to be present despite the clear knowledge by one party that it was copying another party’s trademark, such as decided on April 13, 1990 by the United States Court of Appeals, Federal Circuit, in Person’s Co., Ltd. v. Catherine Christman (900 F.2d 1565):

“18. As the Board noted below, Christman’s prior use in U.S. commerce cannot be discounted solely because he was aware of appellant’s use of the mark in Japan. While adoption of a mark with knowledge of a prior actual user in U.S. commerce may give rise to cognizable equities as between the parties, no such equities may be based upon knowledge of a similar mark’s existence or on a problematical intent to use such a similar mark in the future. Knowledge of a foreign use does not preclude good faith adoption and use in the United States. (…)

19. We agree with the Board’s conclusion that Christman’s adoption and use of the mark were in good faith. Christman’s adoption of the mark occurred at a time when appellant had not yet entered U.S. commerce; therefore, no prior user was in place to give Christman notice of appellant’s potential U.S. rights. Christman’s conduct in appropriating and using appellant’s mark in a market where he believed the Japanese manufacturer did not compete can hardly be considered unscrupulous commercial conduct. (…).”

This Panelist understands, therefore, that under the Policy “bad faith” is not exclusively the prior knowledge that the domain name is identical to a third party’s trademark, because there might be circumstances where there is such knowledge and bad faith is absent, while there may also be circumstances where there is no such knowledge and bad faith is present. This dispute is an example of the latter situation, and the finding of bad faith does not require that there is a finding of constructive knowledge, but only to consider that the gross negligence of the Respondent is a form of bad faith.

In fact, when a registrant fails to observe a reasonable degree of diligence, failing to undertake an easy, fast and cost-free trademark search on the Internet, as was already available both at the USPTO and the BTO in 2002, this Panelist understands that such negligence is tantamount to bad faith. Being a professional investor, the Respondent obviously knew that by purchasing the disputed domain name there was a risk of entering into the scope of a third party’s trademark rights, but the Respondent preferred not to look any further into the matter. By so doing, this Panelist understands that the Respondent assumed the risks that such omission could entail.

That a registrant must exercise a certain degree of diligence is clear from paragraph 2 of the Policy, “Your Representations”, that is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

The level of diligence must be higher or lower depending on the circumstances. In the case of the Respondent, which holds a domain name and hosts a PPC web page, such degree of diligence is higher than of a non-professional investor, because without a risk-free domain name the Respondent has no other activity. In fact, the Respondent has mentioned in the Affidavit submitted by an Officer, as Exhibit “A” to its Reply, that it is “a private company with multiple business interests”, but an Internet search failed to disclose any web site from the Respondent, and the Respondent has not specified which would be these other “multiple business interests” either; thus, it is reasonable to assume that the Respondent’s main, if not only business, is to explore PPC web pages.

The Respondent’s assertion that a search for “BB” on Google shows no reference to the Complainant in the first 100 hits is also not correct, at first because a search made by this Panelist at “google.com.br” clearly reveals the Complainant as No. 1 in the search results and it is obvious that at “Google.com” (where the Respondent has searched) the Complainant’s web site is not shown because the Complainant does not own the web site “bb.com”.

Even if the the Complainant’s trademark could not easily be found by the Respondent through a quick Internet search at the USPTO – as it indeed was, since its first filing in 1994 – this Panelist considers that also due to the fact that the Respondent was willing to pay USD 40,100.00 for the disputed domain name (as it did) the Respondent’s duty of diligence is a high one in this case. Otherwise, it would be too easy for registrants to circumvent any claim based on trademark rights: they would simply make sure that they do not search at all, in order to truthfully claim that they were not aware that the domain was identical to a trademark. The law cannot condone a negligent behavior by a registrant; on the contrary: it should give incentive to a diligent conduct.

In a domain name of an international character, such as “.com” domain, this Panelist understands that it is another clear sign of negligence that the Respondent did not bother to search for an identical trademark in the world’s major economies. The Complainant has been known by “BB” in Brazil since the early nineteenth century. Brazil has the ninth largest Gross Domestic Product in the world, and a registrant’s rights and obligations of a “.com” domain name are not confined within the United States, where the Respondent is located.

The aforementioned considerations are relevant in the context of a finding of bad faith by the Respondent, regardless of the Respondent’s actual prior knowledge of the Complainant’s extensive use of trademark “BB”. This is a not a presumption of prior knowledge by the Respondent: it is the conviction that the failure to exercise the reasonable diligence required in this specific case means that the Respondent has acquired and uses the disputed domain name in bad faith.

This Panelist understands that the above reasoning is consistent with the Policy. In the case of the domain <wcmh.com> (Media General Communications, supra), the facts were extremely similar to the case now being decided, as in both cases the domain are formed by acronyms, with the sole difference that in the <wcmh.com> case both parties were in the United States:

“In either event, the Panel finds that paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Paragraph 2 of the Policy, ‘Your Representations,’ is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:

‘By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.’

The Respondent and its affiliates advertise ‘premium domains.’ In many cases (including this one), they assign asking prices to the individual domain names. These facts strongly suggest that even where the acquisition process is automated, there is a degree of human review and evaluation of some or all of the domain names, evidently including the Domain Name at issue here. It is entirely fair to expect that this review would entail, for example, some effort to avoid illegality, trademark infringement, and violation of the Policy, as suggested by paragraph 2 of the Policy and by the Respondent’s own statements. Thus, the panel in HP Hood LLC, supra, spoke of restricting a reseller’s portfolio in ‘a good faith effort to avoid misleading the public’; otherwise, the reseller’s registration of a domain name could not be considered a ‘legitimate’ business activity or one carried out in good faith. The panel in Mobile Communication Service, supra page 5 and 7, contemplated at least a minimal degree of due diligence in deciding against a respondent where the domain name ‘is not a dictionary word, and even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark.’

There is no evidence in the record that the Respondent in the present case engaged in any such review before registering the Domain Name, listing it for sale for $75,000 (one of its more expensive listings), and using it to redirect visitors to a website filled with advertising links. According to the Declaration of Rochelle Hastings submitted with the Response, ‘We only register domain names which incorporate common words, descriptive terms, and/or words and terms to which we believe no single party has exclusive rights.’ But the Domain Name at issue in this proceeding is not a common word or descriptive term, and the Respondent does not indicate what efforts it made to determine that its registration would not violate the Policy. The Domain Name is an arbitrary string of letters that is, in fact, registered as a US trademark. A search engine query of ‘WCMH’ predominantly displays results referring to the Complainant’s WCMH television station and its news and entertainment programs.

Such a query might not be considered necessary in registering a ‘dictionary’ domain name, but the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase.”

For the mentioned reasons, this Panelist finds that the Respondent has acquired and uses the disputed domain name in bad faith. The Panelist therefore concludes that the Complainant has met the requirements set forth in paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panelist dissents from the majority and considers that the domain name <bb.com> should be transferred to the Complainant.

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Gabriel F. Leonardos
Panelist (Dissenting)

Dated: June 6, 2008