Complainant is Weyerhaeuser Company, Federal Way, Washington, United States of America, represented by an internal authorized representative.
Respondent is Leonard Meng Lee, Union City, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tjbeam.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2007. On October 19, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 19, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2007. The Response was filed with the Center on November 1, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on November 7, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a large international forest products company.
Complainant owns the trademark TJ-BEAM, which was registered on the Principal Register of the United States Patent and Trademark Office on July 6, 1999, with claimed first use since as early as 1982, a listed (on the provided trademark certificate) first use in commerce in 1989, and a listed registration date for the mark in 1999. The mark applies to “Computer programs for use in the selection and design of building materials” (Class 9) and “Engineering services, namely, the design and selection for others of building materials” (Class 42).
Complainant owns ten registrations of the TJ-BEAM mark in five other countries and the European Community. Eight of those registrations are dated prior to May 2, 2006.
Respondent registered the domain name, <tjbeam.com>, on May 2, 2006.
5. Parties’ Contentions
A. Complainant
Complainant contends that in 1999 it acquired Trus Joist MacMillan, including that company’s TJ-BEAM trademark, which the predecessor company had used in commerce since at least 1982. Complainant has continued extensive and prominent use of the mark in interstate commerce in connection with the advertising and sale of its structured wood products, obtained registration of the mark in 1999, and contends that consumers have come to know and recognize the mark and associate it with Complainant.
Complainant contends that the Domain Name is confusingly similar to Complainant’s TJ-BEAM trademark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not known by the Domain Name, and Complainant has not authorized Respondent to use its registered trademark.
Complainant further asserts that Respondent is using the Domain Name to attract Internet users to a pay-per-click portal website providing advertising links to other sites based on a contextual relationship to certain words, including “TJ” and “Beam,” which Complainant contends does not “justify credible use of the domain name.”
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Respondent is operating a monetized domain to intentionally attract users to his website and thus to links to other websites to generate ad revenues on a pay-per-click basis.
Complainant offered to purchase the Domain Name from Respondent for $50. In a response to that offer, Respondent claimed that “The domain name TJBeam.com is reserved for my client named Theodore Beam. My client is not selling the domain name.” There is a pitcher for the New York Yankees baseball team named Theodore Lester “T.J.” Beam. However, Respondent’s website has no content related to Theodore Beam, and Complainant contends that there is unlikely to be any legitimate association between Respondent and Theodore Beam.
Complainant further states that Respondent has a history of registering domain names incorporating the names of famous third parties without their consent, referring the Panel to Utada Hikaru v. Leonard Meng Lee, WIPO Case No. D2007-0366.
B. Respondent
Respondent filed a timely, albeit brief, Response, contending that he registered the Domain Name “as a fan website for New York Yankees major league baseball pitcher TJ Beam” and that “it has nothing to do with Weyerhaeuser or any of its trademarks.” Respondent distinguishes Complainant’s registered trademark TJ-BEAM, which has a hyphen, from the Domain Name, which does not, and asserts that Complainant should register <tj-beam.com>.
Respondent further contends that he never contacted Complainant to try to sell the Domain Name “thus voiding any use of the domain name in bad faith”. He further alleges that Complainant showed “poor communication skills” in dealing with him.
With respect to the previous WIPO Panel decision against him, Respondent contends that he did not want to waste his time on an insignificant domain name and thus did not reply to the complaint in that case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant has established legal rights in the trade/service mark TJ-BEAM by reason of its longstanding continuous use of the mark and its registration of the mark on the Principal Register of the United States. See Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO Case No. D2000-0503. Respondent does not contest Complainant’s trademark rights.
The Domain Name, <tjbeam.com>, incorporates Complainant’s trademark in its entirety, with the exception of the hyphen in Complainant’s mark. The spelling and the sound of the Domain Name and Complainant’s trademark are identical. The omission in the Domain Name of the hyphen used in the trademark is inconsequential for purposes of determining whether the Domain Name and the trademark are confusingly similar. The hyphen itself conveys no meaning sufficient to distinguish the Domain Name and the mark. There is well-established precedent under the Policy that “the deletion of spaces or other such trifling changes are utterly de minimus, if not completely irrelevant, in assessing identicality/confusing similarity and thus is totally ignored. Utada Hikaru v. Leonard Meng Lee,WIPO Case No. D2007-0366; Lane-Labs USA, Inc. v. Powell Productions, NAF Case No. FA 155896. Hyphens and dashes have been found not to distinguish domain names from trademarks. Guiness UDV North America, Inc. v. UKJENT,
WIPO Case No. D2001-0684; Phenomedia AG v. Meta Verzeichnis Com,
WIPO Case No. D2001-0374. The Panel thus finds that Respondent’s omission of the hyphen from Complainant’s trademark does not create a meaningful distinction between the trademark and the Domain Name and is therefore irrelevant here.
The Panel concludes that the Domain Name is confusingly similar to Complainant’s trademark and that Complainant therefore has established the first element of its case.
B. Rights or Legitimate Interests
Complainant makes a sufficient prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not known by the Domain Name, and Complainant has not authorized Respondent to use its registered trademark. Complainant, moreover, challenges whether Respondent is using the Domain Name in connection with a bona fide offering of goods or services.
Respondent’s only contention which ostensibly addresses the question of whether he has rights or legitimate interests in the Domain Name is his assertion that he registered the Domain Name as “a fan website” for baseball pitcher T.J. Beam. Respondent does not now contend and did not try to prove what he apparently told Complainant just prior to the filing of the Complaint, i.e. that the professional athlete T.J. Beam is his client and that he is reserving the Domain Name for his client.
Respondent’s present assertion that he registered the Domain Name as a “fan website” for the baseball player is not supported by the record. In order to be legitimate “fan sites” must be active and noncommercial. 2001 White Castle Way, Inc. v. Glyn O. Jacobs,
WIPO Case No. D2004-0001 (patbenatar.com); Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,
WIPO Case No. D2001-1042; Helen Fielding v. Anthony Corbert aka Anthony Corbett,
WIPO Case No. D2000-1000 (respondent not making a noncommercial fair use of name). Respondent’s site is neither an active fan site nor is it noncommercial. There is no content on the website which mentions or has anything whatsoever to do with T.J. Beam the baseball player. Rather, the site contains several links to sponsored search results for goods or services for such things as beam welding, Beam Central Vac Nozzles, automotive suspension systems, and a laser beam profiler. This is no fan website for pitcher T.J. Beam, and Respondent offers no evidence that it ever has been. Moreover, the site appears to be patently commercial, and Respondent does not deny that it is.
Even if it were true that Respondent, in registering the Domain Name, had in mind the name of the baseball player rather than Complainant’s trademark, as he contends, this would not establish that Respondent had rights or legitimate interests in the Domain Name. Respondent has not shown that he had Mr. Beam’s consent to use of the name. Respondent thus would still be using an individual’s name without that individual’s consent to generate commercial gain for Respondent. The person whose name Respondent has appropriated for personal gain may well have common law trademark rights in his/her name. See Utada Hikaru v. Leonard Meng Lee, WIPO Case No. D2007-0366; Mike Schmidt, c/o Dreams, Inc. v. RegisterFly.com—Ref. #17067566,
WIPO Case No. D2006-0603 (baseball player); Julia Fiona Roberts v. Russell Boyd,
WIPO Case No. D2000-0210 (movie actress). As one WIPO Panel has stated recently “A business built on the unauthorized exploitation of another’s name and trade/service mark and involving deception of Internet users cannot sensibly be regarded as a ‘bona fide offering of goods and services’ within the meaning of paragraph 4(c)(i) of the Policy.” Independent Golf Research Inc. v. Whois Service,
WIPO Case No. D2007-0732.
Respondent has not shown that he possesses rights or legitimate interests in the Domain Name. Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
Finally, Complainant must establish that Respondent registered and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii). The fact that Respondent did not contact Complainant to offer to sell the Domain Name does not, as Respondent contends, “void any use of the domain name in bad faith.” There is, of course, other possible evidence of bad faith registration and use specified under paragraph 4(b) of the Policy. Furthermore, paragraph 4(b) makes clear that a showing of bad faith is not limited to the circumstances specified there. Telstra Corporation Ltd. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The Policy provides that evidence of bad faith registration and use may exist where Respondent “by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [his] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his] website or location or of a product or service on your website or location.” Policy, paragraph 4(b)(iv). The Panel concludes that there is sufficient evidence of record from which to infer that, in fact, Respondent is intentionally using the Domain Name to attract users to his site for his own commercial gain by creating confusion with Complainant’s registered trademark. Respondent had at least constructive notice of Complainant’s trademark by reason of its registration. Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,
WIPO Case No. D2000-0090. The Domain Name is confusingly similar, if not virtually identical, to Complainant’s registered mark; Respondent does not have a legitimate interest in the Domain Name; and Respondent does not contest that he receives advertising revenues from the site. Respondent is therefore to a significant extent exploiting user confusion between Complainant’s registered trademark and the Domain Name, which is in the Panel’s view sufficient to establish bad faith registration and use of the Domain Name.
Paragraph 4(b)(iv) of the Policy specifically addresses the situation in which the Domain Name creates a likelihood of confusion with the complainant’s mark. To the extent that Respondent contends he was using the name of T.J. Beam the baseball player, not Complainant’s trademark, and that there was no intent to create a likelihood of confusion with Complainant’s mark and thus no bad faith, the argument must be rejected for several reasons.
First, the fact that Respondent offered different, and ultimately unsupported, reasons for using the baseball player’s name in the Domain Name tends to diminish or negate Respondent’s credibility on the issue of his intent.
Second, the coincidence between Complainant’s registered trademark and the name of a professional baseball player does not of itself necessarily establish that Respondent was attempting to exploit the player’s name but not Complainant’s trademark. It may only establish that Respondent recognized an opportunity to exploit both at the same time, which would not save him from an inference of bad faith registration and use.
Third, as noted above, evidence of bad faith is not limited to the particular forms specified in paragraph 4(b) of the Policy. Telstra Corporation Ltd. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. If in fact Respondent’s only intent was to exploit a likelihood of confusion with Mr. Beam’s name without his consent, rather than with Complainant’s trademark, that would hardly constitute a demonstration of good faith on Respondent’s part. See Independent Golf Research Inc. v. Whois Service,
WIPO Case No. D2007-0732. Assuming that Mr. T.J. Beam possesses certain common law rights in his own name, see Utada Hikaru v. Leonard Meng Lee,WIPO Case No. D2007-0366, Respondent’s unauthorized exploitation of those rights would still be in bad faith. There would be confusing similarity between the Domain Name and the mark, an absence of rights or legitimate interests in the Domain Name; and bad faith under paragraph 4(b)(iv) of the Policy. Under those circumstances, Respondent’s bad faith might not have been directed solely against Complainant here, but it would still constitute bad faith registration and use of the Domain Name. In the Panel’s opinion, the fact that Respondent’s bad faith in registering and using the Domain Name might have been directed (in whole or part) toward a third person should not be recognized as a defense of good faith against Complainant’s case here.
The Panel concludes that Complainant has established the third and final element of its case.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name < tjbeam.com> be transferred to the Complainant.
John R. Keys, Jr. Sole Panelist
Date: November 21, 2007
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