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International Business Publishers, Inc. v. The Center for Business Intelligence, LLC [2001] GENDND 936 (11 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is International Business Publishers, Inc. whose principal place of business is 9400 MacArthur, Irving, Texas 75063, USA. The Respondent in this case is the Center for Business Intelligence, LLC whose contact information is 500 W. Cummings Park, Suite 5200, Woburn, Massachusetts, 01801, USA.

The domain names at issue are <worldenergyonline.com> and <worldenergyonline.net> which are registered with BulkRegister.com in Baltimore, Maryland, USA.

A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 2, 2001.

On March 6, 2001, a Verification Response was received from BulkRegister.com which served to: (1) confirm that BulkRegister.com was in receipt of the notification of the domain name dispute; (2) confirm that BulkRegister.com is the registrar of the domain names; (3) confirm that the Center for Business Intelligence, LLC is the current Registrant of the domain name; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar’s WHOIS database for the Registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact.

On March 13, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.

A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (FedEx, fax email), dated March 14, 2001. The Notification set a deadline of April 2, 2001, by which the Respondent could make a Response to the Complaint. Respondent submitted a Response on March 31, 2001.

On April 27, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on April 27, 2001, was May 11, 2001.

Complainant, International Business Publishers, Inc. ("IBPI"), provided evidence that it has a U.S. Trademark registration for the mark WORLD ENERGY for a "printed magazine for industries that produce, provide, use or otherwise depend upon fossil fuels or generated power" and for "computer services, namely, providing on-line magazines for industries that produce, use or otherwise depend upon fossil fuels or generated power."

Complainant publishes printed and on-line magazines under the WORLD ENERGY marks. The on-line version of WORLD ENERGY magazine, located at <worldenergysource.com>, contains articles written by industry and political leaders and includes a search engine for searching the articles of the magazine. The web site posts the latest news from around the world, the means to get stock quotes, and a calendar of major events in the energy industry.

Respondent, the Center for Business Intelligence, LLC ("CBI") is the current Registrant of the domain names <worldenergyonline.com> and <worldenergyonline.net> which were registered on March 17, 2000. Respondent is a subsidiary of World Conference Holdings, Inc. ("World Conference") which first organized the World Economic Development Congress in September of 1992. Every year the World Economic Development Congress has had a major session on energy. CBI produced over 30 energy related conferences in 2000.

The web site maintained by Respondent at <worldenergyonline.com> provides stock quotes, a listing of future events in the energy industry, links to other web sites in the energy industry, the latest news from the energy industry, and press releases pertinent to the energy industry. Respondent’s web site includes articles on the coverage of technical developments, case studies, industry news, company news, product announcements, and opinion pieces. Respondent does not currently host a website at <worldenergyonline.net>.

Complainant contends that Respondent has registered a domain name that is confusingly similar to a trademark in which Complainant has rights. Complainant asserts that the domain name is confusingly similar to Complainant’s mark because it incorporates the trademark in its entirety and merely adds the generic term "online". Complainant adds that the likelihood of confusion is significant because Respondent offers substantially the same content at its Web Site as is offered by Complainant and that Respondent’s web site competes directly with Complainant’s site.

Complainant contends that Respondent’s web site is directed toward the same people as Complainant’s magazine. Because the content of the two web sites are similar, Complainant contends that Respondent is directly benefiting from the goodwill of Complainant’s WORLD ENERGY marks.

Complainant asserts that Respondent had constructive notice of Complainant’s rights in the mark before Respondent registered the domain name. Additionally, Complainant asserts that because of the confusion caused by the domain name chosen by Respondent and the similarity of Respondent’s web content, Complainant is being deprived of the opportunity to promote its WORLD ENERGY on-line magazine to interested parties.

Respondent claims that the words "world" and "energy" are common and generic terms and that Complainant is therefore not entitled to exclusive use of those two words in combination with a third generic term "online." Additionally, Respondent indicates that Complainant commenced its online magazine in 1997, and at that time chose to register <worldenergysource.com>. Complainant therefore had three years in which to register <worldenergyonline.com> before Respondent registered the name.

Respondent claims that its web site has 10 times more traffic than Complainant’s web site and thus Respondent is not trying to trade off of the good will of Complainant, but instead hosts its own viable site. Additionally, Respondent states that its web site is a portal site that aggregates energy information and is not a magazine like Complainant’s site.

Respondent claims that it was unaware of IBPI’s WORLD ENERGY trademark when it registered <worldenergyonline.com> and <worldenergyonline.net>. Additionally, Respondent asserts that it offered to help garner traffic for Complainant’s site by offering a distinct link from the <worldenergyonline.com> site to World Energy magazine.

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,

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

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

Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. trademark rights to the name WORLD ENERGY for printed and online magazines for industries that depend on fossil fuels or generated power. The domain names <worldenergyonline.com> and <worldenergyonline.net> incorporate Complainant’s mark in its entirety, but add a generic term "online" to the mark.

The addition of the generic term "online" does not eliminate confusion with Complainant’s mark because it describes one of the services for which Complainant has a mark – an online magazine. The fact that Respondent offers significantly similar and potentially competing content at its web site increases the likelihood of confusion.

Because the disputed domain names incorporate the WORLD ENERGY mark in its entirety, the Respondent offers substantially similar content, and the addition of the generic term does not help differentiate or diminish any confusion, this Panel finds that the domain names are confusingly similar to a mark in which Complainant has rights.

To succeed in its request for transfer, Complainant is required to prove that Respondent does not have any rights or legitimate interest in the contested domain names. Complainant alleges that Respondent does not have any rights or legitimate interest in the domain names, but does not offer any evidence to support this allegation.

In contrast, Respondent offers evidence of its legitimate interest in the domain name. Respondent states that every year the World Economic Development Congress has had a major session on energy and that these sessions are often referred to as World Energy. Additionally, it is apparent from the materials submitted by Respondent that Respondent has run numerous conferences relating to the world energy industry for many years. Respondent chose to broaden this business by providing an online site that serves as a portal of information on the world energy industry. Respondent chose a domain name, <worldenergyonline.com> that is descriptive of the subject matter of its business and web site. Respondent also registered <worldenergyonline.net>, but does not yet use this domain name to connect to a web site. Although Respondent does not currently use this domain name, Respondent has shown that it has a legitimate connection to the world energy industry.

Respondent has asserted a plausible legitimate interest in the names and Complainant has offered no evidence—as opposed to allegations--to establish that Respondent does not have a legitimate interest. Thus the Panel finds that Complainant has not carried its burden of showing that Respondent does not have any right or legitimate interest in the domain names.

Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain names have been registered and used in bad faith. According to Complainant, Respondent had constructive notice of the mark because it is a registered trademark. Respondent, however, specifically asserts that it did not know of Complainant’s WORLD ENERGY mark when it registered the domain names in dispute. Even if Respondent had known of Complainant’s mark when it registered the domain names, mere knowledge of a trademark does not by itself constitute bad faith.

Complainant claims that Respondent is directly benefiting from the goodwill of Complainant’s marks by creating a competing web site. Paragraph 4(b) of the Policy outlines the circumstances that may serve as evidence of bad faith. One such circumstance is use of the domain name to intentionally attract Internet users to the site by creating a likelihood of confusion as to source, sponsorship or affiliation. While it is possible that Respondent has benefited from the goodwill of Complainant’s marks, Complainant has not alleged or shown that Respondent intended this result.

Complainant also asserts that Respondent’s use of the domain name deprives Complainant of the opportunity to promote its WORLD ENERGY on-line magazine to interested parties. Once again, however, there is no evidence that Respondent registered the domain name for the purpose of preventing Complainant from reflecting its mark in a domain name. In fact, Complainant has reflected its mark in a domain name similar to the domain names in dispute in this case. Complainant registered <worldenergysource.com> in 1997. There is no evidence indicating that it did not have the opportunity for three years to register <worldenergyonline.com> or <worldenergyonline.net> before Respondent registered the names.

The circumstances listed in paragraph 4(b) of the Policy are merely examples of bad faith. While Complainant has not proven that any of these circumstances are present, it has also not offered any other evidence of bad faith registration and use of the domain names. Thus, this Panel finds that Complainant has not carried its burden of proving that Respondent has registered and used the domain names in bad faith.

This Panel decides that Complainant has not shown that the Respondent has no legitimate interest in the domain names or that the domain names were registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel orders that the registration of the domain names <worldenergyonline.com> and <worldenergyonline.net> remain with Respondent.

Roderick M. Thompson
Sole Panelist

Dated: May 11, 2001