IBUY Stores, Inc. of New York, just lost its bid to grab the domain name ibuy.com in a UDRP
IBuy Stores owns the domain name ibuystores.com
This case really should have gotten a Reverse Domain Name Hijacking ruling.
The domain holder applied for a trademark in 2008, they bought the domain name in 2007 and the Complainant first filed its trademark in 2015 however the one member panel of David H. Bernstein did not even bring up the issue.
Here are the highlights:
Complainant is the owner of a United States federal registration for IBUY, Reg. No. 4,674,150, in Class 7, for blades for power saws; circular saws; machine tools, namely, vices for use in the precision clamping of work pieces; power tools, namely tile saws; and wood sawing machines. Complainant filed its application for trademark registration on January 9, 2014, claiming first use in commerce of this trademark as of at least July 15, 2001. The registration was issued on January 20, 2015.
Respondent filed an application to register IBUY.COM on May 14, 2008, Serial Number 77/474,187, in Class 35 for an online retail store featuring consumer electronics and camera equipment.
The application indicated a first use in commerce as of at least January 1, 2008. The U.S. Patent and Trademark Office (“USPTO”) issued an office action in which it refused registration on the grounds that (1) the mark was confusingly similar to a third party’s B BUY.COM and BUY.COM registrations, and (2) IBUY is merely descriptive for online retail store services. Respondent did not respond to the office action, and the application was therefore deemed abandoned on March 12, 2009 (as a matter of law, such abandonment is without prejudice).
Respondent applied to register the mark IBUY.COM in 2008, prior to Complainant’s trademark application to register for IBUY. 2
Although that application was later refused, the trademark application is evidence of Respondent’s intention to use the designation IBUY for a legitimate interest at that time.
Indeed, since then, Respondent has used the IBUY designation to sell consumer electronics on the websites “www.ibuydigital.com” and “www.ibuyplasma.com”
Complainant asserts, though, that Respondent’s registration of the Domain Name was not legitimate because Complainant had prior trademark rights.
Although Complainant asserts that it has used the IBUY mark for saws and blades and related goods since 2001, it has not submitted any evidence that establishes that it had the exclusive right to use the IBUY mark as of 2007 (when Respondent acquired the Domain Name) or that Respondent must have been aware of the mark at the time Respondent acquired the Domain Name.
Moreover, the Panel notes that there is no evidence that Respondent is selling or intends to sell saws, blades, fireplaces, fireplace parts, grill parts, barbeques, or construction parts and materials, which are the goods covered by Complainant’s registration and/or sold by Complainant on its website.
Thus, even if Complainant had trademark rights in IBUY for saws, blades and related goods at the time that Respondent registered this Domain Name, that would not make Respondent’s use of IBUY for different goods (e.g., consumer electronics) infringing. Thus, Complainant has not succeeded in establishing, by a preponderance of the evidence, that Respondent did not make legitimate uses of the IBUY mark over the last seven years.
That the USPTO has refused to register Respondent’s mark on the ground that it is merely descriptive provides further support for Respondent’s argument that it has a legitimate interest in the Domain Name.
If Respondent is using the term IBUY descriptively for a website at which consumers may buy products, and given that Respondent does not appear to be trying to trade off of Complainant’s trademark rights by selling or linking to competitive goods, that is a use that reflects a legitimate interest in the Domain Name.
The Panel finds on this record that Complainant has failed to establish that Respondent lacks any rights or legitimate interests in the domain.
Respondent provides evidence that he purchased the Domain Name in 2007, as part of a suite of domain names, prior to Complainant’s establishment of its website (in 2008) or registration (in 2015) of its IBUY mark.
Had Respondent conducted a trademark search at the time, Respondent would not have found any federal registration reflecting Complainant’s mark because Complainant did not apply to register its mark until 2014, nor would Respondent have been able to view Complainant’s website at that time because the site was not yet in use in 2007.
Complainant also has not submitted evidence that its mark was well known (either then or now, Complainant’s unsupported conclusory allegation that its mark was well known and has become famous notwithstanding) at the time such that Respondent would or should have been aware of it. These facts suggest that Respondent likely was not aware of Complainant’s rights in the mark IBUY at the time he acquired the Domain Name in 2007, and thus could not have acquired the mark with a bad faith intention against Complainant and its mark.
Nor is there evidence that Respondent has used the Domain Name in bad faith. For example, Respondent presents evidence that he has repeatedly refused to sell the Domain Name since he purchased it in 2007. Complainant presents no evidence Respondent has ever attempted to sell, rent or otherwise transfer the Domain Name to Complainant.
Complainant additionally presents no evidence that Respondent registered the Domain Name to prevent it from reflecting the IBUY mark in a corresponding domain name.
Contrarily, Complainant’s current website, “www.ibuystores.com”, reflects this mark.
Respondent has also stated that he intends to use the Domain Name to sell his own goods, which do not compete with Complainant’s goods, although he has not presented any evidence of demonstrable preparations to do so. However, Complainant has presented no evidence that Respondent has intentionally attempted to attract users to its website or other online location by creating a likelihood of confusion with Complainant’s mark.
As such, the Panel finds on this record that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith, and Complainant thus has failed to satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.