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Generic Top Level Domain Name (gTLD) Decisions |
BNI Enterprises, Inc. and BNI Franchise
Corp. v. Mr. B T Smith a/k/a Tom Smith
Claim Number: FA0205000113259
PARTIES
Complainant
is BNI Enterprises, Inc. and BNI
Franchise Corp., San Dimas, CA, USA (“Complainant”) represented by Adam R. Bialek, of Wilson, Elser, Moskowitz, Edelman & Dicker LLP. Respondent is Mr. B T Smith a/k/a Tom Smith, Sutton Surrey, GREAT BRITAIN
(“Respondent”).
The
domain name at issue is <bni.biz>,
registered with Total Web Solutions.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Rodney
C. Kyle as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 3, 2002; the Forum
received a hard copy of the Complaint on May
6, 2002.
On
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 3,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on June 3, 2002.
Complainant’s
Additional Submission was received and determined to be complete on June 10,
2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Rodney C. Kyle as
the single Panelist.
Complaint paragraph 7 is that "The
Complainant, BNI, requests that the Panel issue a decision that orders the
transfer of the
domain-name registration from the Respondent to the
Complainant, BNI. As the Respondent has
acted in bad faith, Complainant requests
Respondent be required to pay costs and
reasonable attorneys fees for the commencement of this arbitration."
A.
Complainant
Complainant
makes two main sets of contentions in the Complaint.
First, by Complaint paragraph 4,
basically that the Respondent is as stated in the "Parties" paragraph
hereof and, by Complaint
paragraph 5 items "a" and "b",
that the domain name at issue and the Registrar thereof are as stated in the
"Registrar
and Disputed Domain
Name" paragraph hereof.
Second, by Complaint paragraph 5 item
"c", that Complainant's "Trademark/Service Mark
Information" is "International
Class 035. US Class 100, 101 and 102. Good and Services rendered: BNI organizes weekly business meetings for
the purpose of
developing business networking between
people for the purpose of promoting business connections and
relationships" and, by Complaint
paragraph 6, that
BNI is a corporation that does business
internationally. The purpose of BNI is
to foster referrals by its members to other members within a chapter. BNI owns
and/or operates and/or oversees
over 2200 local chapters internationally
compromising in excess of 50,000 members.
A BNI chapter is compromised of approximately 12 to 30 members, each
representing one vocation or trade. A
purpose of BNI is to help generate business by passing referrals from member to
member.
The respondent was the Chapter Director
for the Leatherhead Chapter in Surrey, Great Britain, from March of 2001 to
March of 2002. In March of 2002 the
respondent stepped down as Chapter Director of this Chapter. At this time Mr. Smith has no involvement or
association with BNI or the Leatherhead Chapter.
respondent has no practical or legal
right to the bni.biz domain name. He
has no affiliation with BNI and would not be using the site for any business or
other purpose. Though it appears that
the respondent may have had a practical purpose when he requested ownership, he
no longer is associated with
BNI, and thus he has no use for the bni.biz site. Respondent’s only current purpose for
ownership of the site is to extort and/or blackmail BNI to paying the
respondent for transfer
of rights to the site.
This is a clear case of cybersquating on a domain name.
a.
The manner
in which the domain name is identical to a trademark or service mark in which
the Complainant has rights:
Annexed hereto as Exhibit A is a chart of
marks registered to BNI in the US, Canada, New Zealand, UK, Australia and South
Africa. In addition, attached as
Exhibit B is a list of primary domain names registered by BNI.
b.
The reason
respondent has no rights or legitimate interests in respect of the domain name
that is the subject of this Complaint is
as follows:
Respondent is no longer affiliated with
BNI. He no longer runs, operates or
manages the BNI Leatherhead Chapter in Surrey, England. He is not a member of this or any other BNI
Chapter. He has no involvement in the
marketing, soliciting, organizing or development of BNI internationally or
locally in England. Upon information
and belief, Respondent has no other business interest in the name BNI and has
no legitimate interest in the domain
name.
The respondent is not the rightful owner or beneficiary of a
trade or service mark identical to the domain name;
The respondent has made no offering of
goods or services corresponding to the domain name. If respondent were to make an offering of goods or services using
the BNI name, this would be a violation of trademark law and also
a strict
breach of the contract respondent signed with BNI when he first became a
manager of the chapter. The contract
provides, in sum and substance, that respondent
is not permitted to use the BNI name or logo for a purpose. Thus, the use of the BNI mark would not be
possible. Annexed hereto as Exhibit
“C” is a copy of the Leadership Team Agreement signed by Respondent.
Individually, respondent has not been
commonly known by the domain name.
c.
The domain
name should be considered as having been registered or used in bad faith
because:
It is possible that at the time
respondent applied for the domain name he may have had a good faith basis to
apply for and use the
domain name.
Respondent, however, cannot use the domain name at this time in good
faith. He has no relationship with BNI
and has no practical purpose for using the domain name. BNI has requested that he relinquish the
domain name and he refused. Respondent
has requested a substantial monetary fee for relinquishing the domain
name. It is clear that respondent’s
only reason for maintaining the domain name is to force BNI to pay him a
substantial monetary payment.
The respondent has
given no indication that he would transfer the domain name to BNI if BNI pays
his costs associated with obtaining
the domain name. In fact, BNI has offered to pay the costs to Respondent, but the
Respondent has refused. Respondent has
demanded a non-designated fee for relinquishment of the domain name.
(Emphasis
in original.)
B.
Respondent
Respondent
makes three main sets of contentions in the Response.
First, by Response paragraph 2, that
"The following domain name is the subject of this
Response: bni.biz" and, by Response
paragraph 3, basically that the Respondent is as
stated in the "Parties"
paragraph of these reasons for decision.
Second,
by Response paragraph 6, that
The Respondent is an employee of RUitS
Ltd. RUitS Ltd was established in 1999 and formally incorporated in 2000. This
is a matter
of public record and can be verified at the UK Government records
available at http://www.companieshouse.gov.uk/info/
The main and sole business activity of
RUitS Ltd is Website Development. RUitS Ltd has been contracted to build a
website for the
British Nursing Institute based at 18 Vale Road, Sutton,
Surrey, SM1 1QH. RUitS Ltd has agreed with the British Nursing Institute
to
underwrite 33% of the capital cost of this website in return for a share of the
website revenue generated.
The domain name bni.biz was registered in
good faith as a normal part of our business practices as Website Developers for
the British
Nursing Institute. RUitS Ltd
made no attempt to register bni.biz when the registration process began last
year because we had no client requirement to
do so.
At no time did we approach the
Complainant about this domain name. At no time did we make any request for
financial or any other recompense.
We have no intention of doing so in the
future. The only request on our part, as instructed by our client, was the
polite and formal
written request for all communications to be in writing.
Despite knowing that we are a Website
Development business, at no time did the
Claimant request details of our reasons, intentions or the nature of the
business represented by the purchase
of the domain name, hence their
lengthy submission of unrelated matters. It is an inherent part of the business
practices of any Website Development
Company to purchase domain names on behalf
of their clients. Similarly, it is sound business practice by Website
Development Companies
to transfer the registrant's name to the client only when
the contract has been delivered and fulfilled by both parties.
It is worth noting that despite the
Claimant's lengthy list of domain names that include the letters 'bni', it does
not own, nor have
they challenged the ownership of the TLD, bni.net, which is
owned by the company Business Network Inc. In addition to sharing the
same
acronym, they share a remarkably similar but unrelated business name. This is
just one example, amongst many, that Business
Network International do not own
nor have the challenged the ownership of Domain Name Registrants with just the
three letter acronym
'bni'.
It is our strongly held
belief, that Business Network International's sole purpose in stating untrue
allegations in their claim are
a spurious attempt to gain ownership of a prized
domain name.
(Emphasis in original.)
Third, by Response paragraph 7, that
In response to the Claimants allegations,
RUitS Ltd, as a recognized independent business represented by Mr B T Smith
subscribed as
a fee paying member of Business Network International between the
period 01Oct00 and 30Sep01. As an independent
member of Business Network International, between the period 01Apr01 -
30Sep01, RUitS Ltd volunteered for the unpaid position of Chapter
Director
which involves chairing a weekly meeting and various administrative duties
associated with managing the group of over 25
different business
representatives, including our own business as Website Developers. Following
the expiration of the annual subscription
and associated costs to RUitS Ltd of
over US$1,000, we did not continue with subscribing after 30Sep01, and did not
attend any further
weekly meetings, thereby resigning on 30Sep01.
RUitS Ltd continues it's strong business
links and associations with the independent members of Leatherhead and other UK
Groups. We
regularly pass and receive business referrals and recommend
prospective new members to various groups throughout England & Scotland.
As
a Website Development Company, we continue to provide a number of free
websites, free hosting space and free email addresses for
past and existing
members.
The dates and allegations specified by
the Claimants against the Respondent are wholly and factually incorrect as well
as being unconnected
with the ownership claim.
We completely
refute the Claimants allegation that a request for a substantial monetary fee
for relinquishing the domain name was
made. This is a blatant untruth. It is
understandable why they have failed to state the alleged amount or in any way
tried to substantiate
this allegation because it is completely untrue. We
initiated no form of communication with the Claimant and have made no requests
for financial recompense and have absolutely no intention of doing so. The only
request on our part, as instructed by our client,
was the polite and formal
written request for all communications to be in writing. This followed 2 phone
calls by the Claimants to
the Respondent in which they demanded ownership of
bni.biz. The Respondent was verbally abused and threatened with legal action if
he did not comply immediately.
(Emphasis in original.)
1. The Panel has a
duty to not include the
above-mentioned Additional Submission as part of the basis for deciding the Complaint.
2. The Panel has a disability against
awarding the relief requested in the second
sentence of Complaint paragraph 7.
3. It has been proven in this proceeding
that within Policy paragraph 4(a)
(i)
the domain
name at issue is identical to a trademark or service mark in which the
Complainant has rights;
(ii)
the
Respondent has no rights or legitimate interests in respect of the domain name
at issue; and
(iii)
the domain
name at issue has been registered or used in bad faith.
GENERAL
Paragraph 15(a) of the STOP Rules instructs this Panel
to “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.”
There are both procedural and substantive aspects to
this case.
PROCEDURAL ASPECTS
The two main procedural aspects of this case are as to
the above-mentioned (i) Additional Submission; and (ii) request for
cost-related
relief.
Additional Submission
Paragraph 1 of the Policy includes that the
Proceedings under Paragraph 4 of this Policy will be
conducted according to the Rules for Start-up Trademark Opposition Policy (the
"Rules") … and the selected administrative dispute resolution service
provider's supplemental rules.
And Rule 8 includes that
All communications between a Party and the Panel or the
Provider shall be made to a case administrator appointed by the Provider in
the
manner prescribed in the Provider's Supplemental Rules.
Supplemental Rule 8 is such a supplemental rule and is
as follows: "The Complaint, Response, and additional written statements
and documents provided in Paragraph 12 of the STOP Rules and Paragraph 7 of
these Supp. STOP Rules constitute the complete record
to be considered by the
Panel." Supplemental Rule 8 applies to this case. (Rule 12 is as follows:
"In addition to the complaint
and the response, the Panel may request, in
its sole discretion, further statements or documents from either of the
Parties."
Rule 12 does not apply to this case.)
As a result of Supplemental Rule 8 applying to this
case, the Panel has considered Supplemental Rule 7 which is as follows:
a. A party may submit additional written statements and
documents to the Forum and the opposing party(s) within five (5) calendar
days
after the date the Response was submitted or the last date the Response was due
to be submitted to the Forum, whichever occurs
first.
b. Each submission
must:
1. be timely
received by the Forum;
2. be accompanied
by an additional submission fee of $250;
3. include proof of service of these submissions upon
the opposing party(s);
4. be submitted in
either hard copy or electronic form.
c. The opposing party may respond, in hard copy or
electronic form, to an additional submission filed in accordance with Supp.
STOP
Rule 7(a); such response must be submitted to the Forum and the opposing
party(s) within five (5) calendar days after the date the
additional submission
was submitted.
d. No amendments may be made to the Complaint or
Response.
Supplemental Rules 7(a), 7(b) and, at least initially,
7(d), appear to apply to this case. Supplemental Rule 7(a) appears to have
not
been complied with since the Additional Submission's 10 June 2002 receipt by
the Forum is after that Supplemental Rule's five
day deadline; non-compliance
with Supplemental Rule 7(b)(1) therefore appears to result. As well, there is
no indication that the
Supplemental Rule 7(b)(2) fee of $250 accompanied the
Additional Submission, so there is no indication of compliance with that
Supplement
Rule. Moreover, there is no indication that the Additional
Submission includes the Supplemental Rule 7(b)(3) proof of service of
the
Additional Submission upon the Respondent, so there is no indication of
compliance with that Supplement Rule. Therefore, Supplemental
Rules 7(a) and
7(b) having apparently not been complied with, the Panel considers it
unnecessary to address compliance with Supplemental
Rule 7(d) and instead
finds, especially in view of Rule 10(b), that the Panel has a duty to not include the above-mentioned Additional
Submission as part of the basis for deciding
the Complaint. (Rule 10(b) is that "In all cases, the Panel shall
ensure that the Parties are treated with equality and that each Party is
given
a fair opportunity to present its case.")
Request for Cost-Related Relief
Policy paragraph 4(i) provides that "The remedies
available to a Complainant pursuant to any proceeding before an Administrative
Panel shall be limited to requiring the transfer of your domain name
registration to the Complainant." Especially in view of
Policy paragraph
4(i), the Panel finds that the
Panel has a disability against awarding the relief requested in the second sentence of Complaint paragraph 7.
SUBSTANTIVE
ASPECTS
General
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes three rules and principles of law that it deems applicable to
ascertaining whether each of those three elements has been proven. First,
that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second, especially as to mode "3",
that Rule 10(d) provides that "The Panel shall determine the
admissibility, relevance,
materiality and weight of the evidence." Third,
as to construing and applying Rule 10(d), especially as to whether mode
"1" rather than mode "3" applies: a
Complainant’s pleading
of fact that is not disputed (or, phrased differently, not "put in
issue") by a Respondent against
whom it is contended, is an admission by
that Respondent, so evidence tendered as being rationally probative of (i.e. as
being "relevant
to") establishing that fact becomes immaterial, and
hence inadmissible, as to establishing that fact.[2]
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on pertinent UDRP precedent where
applicable.
In general (i)
under the STOP proceedings, a STOP Complaint may only be filed when a domain
name at issue is identical to a trademark
or service mark for which a
Complainant has registered an Intellectual Property (IP) claim form, so every
STOP proceeding necessarily
involves a disputed domain name that is identical
to a trademark or service mark in which a Complainant asserts rights; and (ii)
the existence of the “.biz” generic top-level domain (“gTLD”) in the domain
name at issue is not a factor for purposes of determining
that a disputed
domain name is not identical to the mark in which a Complainant asserts rights.
As well, the
Panel makes two findings in view of applying the above-mentioned underlined
three rules and principles of law to
each party's contentions on this element. (Those contentions comprise
especially what is characterized above as each party's "First"
main
set of contentions as well as Complaint paragraph 5 item "c" and the
preamble, and first sentence, in Complaint paragraph
6 item "a".)
First,
for the purposes of this proceeding Respondent does not dispute and instead
admits Complainant's contentions that, within the
meaning of the Policy
paragraph 4(a)(i) expression "[the Respondent’s] domain name is identical
to a trademark or service mark
in which the Complainant has rights", (i) a
domain name registration of <bni.biz> exists and Total Web
Solutions is the registrar, and Respondent is the registrant, thereof; and (ii)
said domain name is identical
to a trademark or service mark in which the
Complainant has rights in "International Class 035. US Class 100, 101 and
102. Good
and Services rendered: BNI
organizes weekly business meetings for the purpose of developing business
networking between people for the purpose of promoting
business connections and
relationships" and that "The manner in which the domain name is
identical to a trademark or service
mark in which the Complainant has rights:
Annexed as [the Complaint's] Exhibit A is a chart of marks registered to BNI in
the US,
Canada, New Zealand, UK, Australia and South Africa."
Second,
evidence tendered as being rationally probative of (i.e. as being relevant to)
establishing those two facts "i"
and "ii" becomes immaterial,
and hence inadmissible, as to establishing them.
In view of all of the above, the Panel
finds the domain name at issue is identical to a trademark or service mark in
which the Complainant
has rights. The Panel therefore finds Policy paragraph 4(a)(i)
is proven.
By Policy paragraph 4(c), in respect of
the domain name at issue,
Any of the following circumstances, in
particular but without limitation, if found by the Panel to be proved based on
its evaluation
of all evidence presented, shall demonstrate [the Respondent's]
rights or legitimate interests to the domain name for purposes of
[Policy
paragraph] 4(a)(ii):
(i)
[The
Respondent is] the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
(ii)
Before any
notice to [the Respondent] of the dispute, [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; or
(iii)
[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.
The
Panel makes two findings in view of applying the above-mentioned three
underlined rules and principles of law
to each party's contentions on this element. (Those contentions comprise,
especially via Complaint paragraph 6 item "b",
Complainant's
contentions of negatives of Policy paragraphs 4(c)(i), 4(c)(ii) and 4(c)(iii)
and, especially via Response paragraph
6, Respondent's contentions of legal
interests of third parties such as a RUitS Ltd. as a contended employer of
Respondent and as
a contended contractor to a contended "British Nursing
Institute".)
First,
for the purposes of this proceeding Respondent does not dispute and instead
admits Complainant's contentions on this element.
Second,
evidence tendered as being rationally probative of (i.e. as being relevant to)
establishing Complainant’s contentions on this
element becomes immaterial, and
hence inadmissible, as to establishing them.
In
connection with the first of those two findings, the Panel notes that as in Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) so too in
this case: a Respondent's assertion of rights of a third party to demonstrate
rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) does not
avail when that third party has not formally intervened
in the proceeding.
Furthermore,
as in Gene Logic Inc. v. Bock, FA
103042 (Nat. Arb. Forum Mar. 4, 2002) so too in this case: while the burden is
initially placed on the Complainant to show that
a Respondent does not have
rights or legitimate interests in a domain name, after such a showing is made,
the burden then shifts
to the Respondent “to explain by valid evidence a course
of business under the name, or at least significant preparation for use
of the
name prior to learning of the possibility of a conflict.” Respondent has not
done so since, as in Twentieth Century
Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002), so
too in this case: a Respondent’s “unsupported, self-serving allegations alone
are
insufficient to establish that [the] Respondent has rights or legitimate
interests in respect to the domain name at issue”, in that
the Respondent’s
assertion that she registered the domain name <foxstudios.biz> in order
to get a website address for her planned
dance studios was, without evidentiary
support, insufficient to establish that she had rights or interests in respect
to the domain
name at issue in that case.
In
view of all of the above, the Panel finds the Respondent has no rights or
legitimate interests in respect of the domain name at
issue. The Panel
therefore finds Policy paragraph 4(a)(ii) is proven.
By Policy paragraph 4(b), in respect of
the domain name at issue,
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be considered evidence of the
registration or use of a domain name in bad faith:
(i)
Circumstances
indicating that [the Respondent has] registered the domain name primarily for
the purpose of selling, renting, or otherwise
transferring the domain name
registration to the Complainant or to a competitor of the Complainant, for
valuable consideration in
excess of [the Respondent's] documented out-of-pocket
costs directly related to the domain name; or
(ii)
[The
Respondent has] registered the domain name in order to prevent the Complainant
from reflecting the mark in a corresponding domain
name; or
(iii)
[The
Respondent has] registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv)
By using
the domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent's]
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 [the Respondent's]
web site or location or of a product or service on [the Respondent's] web site
or location.
On
this element the contentions effectively include (i) in the Complaint
(especially via the first sub-paragraph and first three sentences
of the third
sub-paragraph of the preamble of Complaint paragraph 6 and via the preamble in,
and first three sentences of, Complaint
paragraph 6 item "c"), that
bad faith use by the Respondent is occurring through the Respondent's passive
holding of the
domain name at issue; and (ii).in the Response, especially via
Response paragraph 6, that legal interests of or relating to third
parties
(such as a RUitS Ltd. as a contended employer of Respondent and as a contended
contractor to a contended "British Nursing
Institute") avail the
Respondent against those contentions of bad faith use.
Respondent's
contentions of legal interests of or relating to third parties no more avail
the Respondent under Policy paragraph 4(a)(iii)
than did like contentions by
Respondent under Policy paragraph 4(a)(ii). As for the facts of Complainant's
contentions of passive
holding, which contentions of fact Respondent basically
admits, the Panel notes that as in Telstra
v. Nuclear Marshmallows, D2000-0003
(WIPO February 18, 2000) so too in this case: passive holding of a domain name
can, and in this case does, constitute
bad faith use.
In view of all of the above, the Panel
finds the domain name at issue has been registered or used in bad faith. The
Panel therefore
finds Policy paragraph 4(a)(iii) is proven.
DECISION
The registration of the domain name at
issue is to be transferred to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Rodney C. Kyle, Panelist
Dated: 4 July 2002
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