[Indexed
as: Ziegenfelder v. VMH]
[Indexed
as: Budgetsaver.com]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. D2000-0039
Commenced:
13 February 2000
Judgment:
14 March 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - U.S. Trademark - Confusingly similar - Bad faith registration - Bad faith use Legitimate Interests.
Complainant owns the BUDGET$AVER trademark. The domain name at issue is the Respondent's registration of <budgetsaver.com>. Complainant alleges that the domain name and its trademark are confusingly similar and that the Respondent registered the name in bad faith.
Held, Name Transferred to Complainant
The use
of the dollar sign and of styled fonts in the trademark BUDGET$AVER are
easily associated with the letter s. Therefore, confusing similarity
exists with the domain name <budgetsaver.com>. Respondent's contention
regarding a lack of confusing similarity fails because there is no evidence
of actual marketingonly an announcement of their intent to market in the
area of pharmaceuticals.
Respondent
has established no rights or legitimate interest in <budgetsaver.com>
because no product or service was marketed using <budgetsaver.com>
Respondent admits that it had knowledge of the trademark BUDGET$AVER. Within twelve days of registering the domain name, Respondent made contact with Complainant to broach the subject of buying or selling domain names. The only content listed on the website www.budgetsaver.com was the listing for sale of a series of domain names including <budgetsaver.com>. Based upon these facts the Presiding Panelist concludes that the registration and the use of <budgetsaver.com> was and is in bad faith.
Policies referred to
Uniform
Domain Name Dispute Resolution Policy
Rules for
Uniform Domain Name Dispute Resolution Policy
Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy
Panel Decision referred to
Page, Panelist: -
1. The Parties
Claimant is
Ziegenfelder Company a West Virginia corporation with its principal place
of business located at 87 Eighteenth Street, Wheeling, West Virginia, 26003
USA. Respondent is VMH Enterprises, Inc. is a corporation with its principal
place of business located at 8369 Prairie Clover Way, Parker, Colorado
80134, USA.
2. The
Domain Name(s) and Registrar(s)
The domain
name at issue is <budgetsaver.com>. The registrar is Network Solutions,
Inc. (the Registrar) of Herndon, Virginia.
3. Procedural
History
The WIPO Arbitration
and Mediation Center (the Center) received the Complaint of Ziegenfelder
Company on February 4, 2000 by email and on February 8, 2000 in hardcopy.
The Complainant paid the required fee.
On February 9, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant. On the same date, the Center sent to the Registrar a request for verification of registration data. On February 10, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain names in dispute and that <budgetsaver.com> is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), the Center on February 13, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint and of the supplemental letter. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 13, 2000.
On February 25, 2000, the Center received the Respondent's Response in hardcopy, which the Center acknowledged to the parties. On March 3, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Richard W. Page as the single panelist (Presiding Panelist). On the same date, the Center notified the parties of this appointment.
4. Factual
Background
Since March
24,1989, Complainant has used the trademark BUDGET$AVER to market its frozen
confections. On October 23, 1989, Complainant filed its BUDGET$AVER
trademark with the United States Patent and Trademark Office. On
August 14, 1990, trademark Registration No. 1,609,978 issued in international
class 30.
On December
8, 1999, Respondent registered the domain name <budgetsaver.com>.
On December
20, 1999, Respondent contacted Complainant by fax indicating an interest
in purchasing <budgetsaver.net> and <budgetsaver.org>. On January
5, 2000, Respondent offered to sell <budgetsaver.com> to Complainant
for US$15,000 and represented that Respondent was in the pharmaceutical
field.
As of January
31, 2000, Respondent operated a website at www.budgetsaver.com in which
the content was a listing of domain names for sale, including <budgetsaver.com>
for an asking price of US$25,000. As of January 31, 2000, Respondent
had not paid the Registrar for registration of the <budgetsaver.com>
domain name.
By February
3, 2000, Respondent had paid the registration fee to the Registrar and
had raised the asking price of the domain name <budgetsaver.com> to
US$500,000.
5. Parties
Contentions
A. Complainant
contends that the domain name <budgetsaver.com> is confusingly similar
to the trademark BUDGET$AVER pursuant to the Policy paragraph 4(a)(i).
B. Complainant
contends that Respondent has no rights or legitimate interest in the domain
name <budgetsaver.com> pursuant to the Policy paragraph 4(a)(ii).
C. Complainant
contends that Respondent registered and is using the domain name <budgetsaver.com>
in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent
contends that the domain name <budgetsaver.com> is not confusingly similar
with the trademark BUDGET$AVER because of the use of the dollar sign and
of styled fonts and because the domain name and the trademark are used
in different market areas.
E. Respondent
contends that it has rights and legitimate interest in <budgetsaver.com>
because of Respondents contemplated sale of pharmaceutical products under
that name.
F. Respondent
contends that its registration and use of <budgetsaver.com> is in good
faith after conducting trademark and domain name searches.
6. Discussion
and Findings
Confusing
Similarity.
The use of
the dollar sign and of styled fonts in the trademark BUDGET$AVER are easily
associated with the letter s. Therefore, confusing similarity exists
with the domain name <budgetsaver.com>. Respondent has only announced
its intent to market in the area of pharmaceuticals. There is no
evidence of actual marketing by Respondent. Therefore, Respondents
contentions regarding a lack of confusing similarity fail. The trademark
and domain name at issue are confusingly similar.
Rights
or Legitimate Interest.
Respondent registered <budgetsaver.com> on December 8, 1999 and contacted Complainant regarding a potential sale on December 20, 1999. During this time no product or service was marketed using <budgetsaver.com>. Therefore, Respondent has established no rights or legitimate interest in <budgetsaver.com>.
Bad Faith.
Respondent admits that it conducted a trademark search before registering <budgetsaver.com> and had knowledge of the trademark BUDGET$AVER. Within twelve days of registering the domain name, Respondent made contact with Complainant to broach the subject of buying or selling domain names. The only content listed on the website www.budgetsaver.com was the listing for sale of a series of domain names including <budgetsaver.com>. Based upon these facts the Presiding Panelist concludes that the registration and the use of <budgetsaver.com> was and is in bad faith.
7. Decision
The Presiding
Panelist concludes (a) that the domain name <budgetsaver.com> is confusingly
similar to the trademark BUDGET$AVER, (b) that respondent has no rights
or legitimate interest in the domain name and (c) that respondent registered
and used the domain name in bad faith. Therefore, pursuant to paragraphs
4(i) of the Policy and 15 of the Rules, the Presiding Panelist orders that
the domain name <budgetsaver.com> be transferred to Complainant.
Richard W.
PagePresiding Panelist
March 14,
2000