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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Cheap Escape Company v. Auto Accents and Amid Yousef
Case No. D2000-0514
1. The Parties
Complainant is The Cheap Escape Company, an Ohio corporation with its principal place of business located at 3105 Farnham Road, Richfield, Ohio, USA.
Respondents are Auto Accents and Amid Yousef (individually and collectively, "Respondent"). Respondent’s address is listed as 6550 Pearl Road, Parma Heights, Ohio, USA.
2. The Domain Name(s) and Registrar
The domain names at issue are JBDOLLARSTRETCHER.COM and JBDOLLARSTRETCHER.NET (the "Domain Names"). The registrar of the Domain Names is Network Solutions, Inc. ("NSI").
3. Procedural History
On May 29, 2000, Complainant submitted its Complaint, with the required filing fee for a three-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center").
On May 30, 2000, WIPO sent a Request for Registrar Verification via email to NSI. On May 31, 2000, NSI confirmed via email to WIPO that the Domain Names are currently registered to Respondent and are in "active" status. NSI further confirmed that Respondent’s registrations of the Domain Names are subject to the Uniform Domain Name Dispute Resolution Policy ("UDRP").
On June 3, 2000, WIPO sent an Acknowledgment of Receipt to Complainant, and copied Respondent.
On May 31, 2000, WIPO completed a Formal Requirements Compliance Checklist. The Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
On June 3, 2000, WIPO issued the Notification of Complaint and Commencement of Administrative Proceeding.
On June 23, 2000, Respondent filed its timely Response with WIPO, and on June 26, 2000, WIPO sent its Acknowledgment of Receipt of Response.
On August 22, 2000, WIPO sent to Complainant and Respondent a Notification of Appointment of Panel, appointing David M. Kelly as Presiding Panelist, and Frederick Abbott and Gary Bouchard as Panelists. WIPO scheduled September 19, 2000, as the date for issuance for the Panel’s decision.
The language of the proceeding is English.
4. Factual Background
Complainant has used the mark J.B. DOLLAR STRETCHER since 1985 as the title of Complainant’s periodic magazine featuring advertisements and coupons for the goods and services of others. Since 1987, Complainant has affixed the symbol "TM" or "Trademark" indicating notice of Complainant’s use of "J. B. Dollar Stretcher" as a trademark, and also began using its mark in interstate commerce.
Complainant’s magazine has a circulation of over two million copies per issue, has a readership of approximately five million, and is distributed in Cleveland, Akron, Canton, Youngstown, Columbus, Dayton, and Toledo, Ohio, and in portions of Southwestern Michigan and Western Pennsylvania. In the past fiscal year, Complainant’s magazine generated revenue in excess of $9.8 million. Currently, Complainant expends over $90,000 per year on the advertising and promotion of its J.B. DOLLAR STRETCHER mark.
In September 1997, Complainant filed an application to register the J.B. DOLLAR STRETCHER mark with the United States Patent and Trademark Office ("USPTO"), for "magazines featuring advertisements and coupons for the goods and services of others" in International Class 16, and for "advertising services, namely preparing advertisements for others, providing advertising space in the magazine, and distributing the magazine" in International Class 35.
Complainant has overcome the USPTO’s initial grounds for objection by distinguishing its mark from another registered mark, and through cancellation and/or expiration of similar marks owned by third parties. Complainant’s application is slated for publication. The USPTO has not taken the position that Complainant’s mark J.B. DOLLAR STRETCHER is merely descriptive or otherwise not inherently registrable.
On September 17, 1999, Respondent registered the domain name JBDOLLARSTRETCHER.COM with NSI. On September 26, 1999, Respondent registered the domain name JBDOLLARSTRETCHER.NET with NSI.
5. Parties’ Contentions
Complainant alleges that Respondent had notice of Complainant’s rights and interests in the mark J.B. DOLLAR STRETCHER when it registered the Domain Names in September 1999. At that time, Respondent had been a customer of Complainant since as early as 1988, capitalizing on Complainant’s goodwill associated with Complainant’s mark by placing advertisements for Respondent’s business, Auto Accents.
Since the summer of 1999, Respondent has owned and operated a periodic magazine entitled CashNet Morningstar, featuring advertisements and coupons for the goods and services of others. Respondent’s magazine is distributed in northeastern Ohio. Since November 1999, Respondent used its website located at the domain name CASHNETUSA.NET to sell advertisement slots for its magazine.
From approximately November 1999 to at least March 2000, Respondent webforwarded the Domain Names to its CashNet Morningstar website. On or about March 31, 2000, Complainant learned of Respondent’s registration and use of the Domain Names, and sent a letter of complaint to Respondent’s ISP. In response, Respondent’s ISP changed the IP settings for the Domain Names to point to NSI’s website, located at www.networksolutions.com
On April 5, 2000, Complainant through its counsel sent a cease and desist letter to Respondent. Respondent answered through its counsel on April 19, 2000, agreeing to "no longer promote web traffic in his direction by means of your client’s trade name," and refused to transfer the Domain Names. In subsequent conversations between counsel, Respondent expressed willingness to transfer the Domain Names in exchange for Complainant forgiving Respondent’s advertising debt of $41,000.
Complainant alleges that the Domain Names are confusingly similar to its mark J.B. DOLLAR STRETCHER. Complainant further alleges that Respondent does not have any rights or legitimate interest in the Domain Names, because (1) it has not used the Domain Names in connection with a website; (2) Respondent’s webforwarding of the Domain Names to its competing website does not constitute legitimate use; (3) Respondent has not been commonly known by the Domain Names; and (4) Respondent has not made a legitimate noncommercial or fair use of the Domain Names.
As to bad faith, Complainant alleges that: (1) Respondent registered and used the Domain Names for the purpose of disrupting the business of a competitor, because Respondent was aware of the competitive relationship between the parties, the falling out between the parties, and Respondent’s knowledge of Complainant’s rights in its mark; (2) through Respondent’s webforwarding activities, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website; (3) Respondent registered the Domain Names to prevent Complainant from reflecting the mark in a domain name, and that the registration of two domain names constitutes a pattern of such conduct; (4) Respondent’s offer to sell the Domain Names in exchange for forgiveness of Respondent’s advertising debt constitutes an offer to sell them for an amount in excess of Respondent’s documented out-of-pocket expenses.
Respondent stated that it approached Complainant with a business idea with the intention of forming a partnership in 1985. That business venture is now known as J.B. Dollar Stretcher, Complainant’s magazine. Respondent intended to finance the project with Complainant, but after Complainant’s refusal of such a contribution, Respondent provided its labor by selling advertisements for Complainant’s magazine. In exchange, Complainant promised free advertising in its magazine to Respondent. After Complainant’s magazine became profitable, Respondent was made to pay for advertising, but continued to provide input on Complainant’s magazine to Complainant.
In the summer of 1998, Respondent approached Complainant with the business proposition of mutually developing a website for Complainant’s J.B. DOLLAR STRETCHER magazine. Complainant did not respond affirmatively. A year later, Respondent protected its idea by registering the Domain Names, because Respondent had previously been precluded from sharing in a business venture with Complainant. Respondent registered the Domain Names because it "wished to develop a new business model for an existing idea and preserved his interest." Further, Respondent has a legitimate interest in the Domain Names: "As a co-founder of the original magazine venture, his interests in the e-commerce expansion are legitimate in light of past relations."
Respondent alleges that Complainant has not shown any bona fide intent to offer goods or services under the Domain Names, because Complainant has not registered any other J.B. DOLLAR STRETCHER-formative domain names.
Because the USPTO has not awarded registration of the mark J.B. DOLLAR STRETCHER to Complainant, Respondent alleges that Complainant has not proven its common law rights to the mark. Respondent thus argues that no conflict exists between the Domain Names and an existing trademark.
Respondent avers that its use of the Domain Names to re-direct traffic to a different website cannot be considered use under the UDRP, because it related to a different trademark.
Respondent denies that it registered the Domain Names in order to sell them to Complainant, and stated that the $41,000 figure only came to exist because it was the alleged current account balance for advertising placed by Respondent.
Respondent denies that it had knowledge of Complainant’s mark, citing its search of the USPTO database prior to registering the Domain Names.
Respondent denies that it has disrupted Complainant’s business because Complainant has no current or past on-line business.
Respondent observes that Complainant offered no independent proof that there is confusion of source or sponsorship, and denied any intent to deceive.
6. Discussion and Findings
Paragraph 4(a) of the UDRP directs that the Complainant must prove each of the following: (1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (2) that the respondent has no rights or legitimate interests in respect of the domain name; and, (3) the domain name has been registered and used in bad faith.
Initially, the Panel finds that the mark J.B. DOLLAR STRETCHER is an inherently protectable mark. Complainant and Respondent have had a business relationship for some time, throughout which Respondent has laid no claim to the mark J.B. DOLLAR STRETCHER and throughout which Respondent has never had any ownership interest in Complainant’s company. Respondent argues only that it was to receive free advertising for its contributions to the business. Therefore, the Panel finds that Complainant owns common law rights in the mark J.B. DOLLAR STRETCHER. The Panel further finds that the Domain Names are each identical to Complainant’s common law mark J.B. DOLLAR STRETCHER.
Under the UDRP, the respondent’s rights or legitimate interests to the domain name are established by demonstrating any of the following three conditions: "(i) before any notice to you of the dispute, your 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 (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent had been aware of Complainant and its J.B. DOLLAR STRETCHER mark and printed publication for years before registering the Domain Names. After Complainant did not affirm its willingness to participate in an online joint venture, Respondent registered the Domain Names with the intent of protecting its idea of a mutually developed website based upon Complainant’s J.B. DOLLAR STRETCHER magazine. Accordingly, the Panel finds that Respondent does not meet any of the three prongs of legitimate interest identified in the UDRP.
Finally, regarding the issue of bad faith, Respondent’s use of the Domain Names to webforward Internet users to its competing magazine was clearly intended to interfere with and to disrupt Complainant’s business by preventing Complainant from using the most obvious and logical domain names for an Internet version of Complainant’s business. Accordingly, the Panel finds that Respondent has used the Domain Names in bad faith pursuant to Paragraph 4(b)(iii) of the UDRP, in that Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor."
The Panel finds that Respondent’s webforwarding activities meet the bad faith criteria defined in Paragraph 4(b)(iv) of the UDRP, in that Respondent has ". . . intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." Through its counsel, Respondent admittedly "promote[d] web traffic in his direction by means of [Complainant’s] trade name."
In view of its findings above, the Panel does not find it necessary to address Complainant’s further allegations of Respondent’s bad faith.
The Panel decides that (1) the domain names JBDOLLARSTRETCHER.COM and JBDOLLARSTRETCHER.NET are each identical to Complainant’s J.B. DOLLAR STRETCHER mark, (2) that Respondent has no rights or legitimate interests in respect of the Domain Names, and (3) that the Domain Names has been registered and used in bad faith.
Therefore, the Panel requires that the domain names JBDOLLARSTRETCHER.COM and JBDOLLARSTRETCHER.NET be transferred to The Cheap Escape Company, Complainant.
David M. Kelly
Frederick Abbott Gary Bouchard
Dated: September 19, 2000