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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.
The disputed domain name <tjbeam.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
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.
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.
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.
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.
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.
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.
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.
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.
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.

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Justia › US Law › US Case Law › US Supreme Court › Volume 293 › Enelow v. New York Life Ins. Co.
Enelow v. New York Life Insurance Co.
1. A decree of the District Court under Jud.Code, § 274b, staying an action at law pending determination on the equity side of an equitable defense to the action, is, in effect, an injunction, and, being interlocutory, is appealable to the Circuit Court of Appeals under Jud.Code, § 129. P. 293 U. S. 381.
2. An application under Jud.Code, § 274b, to stay (i.e., to enjoin) proceedings of a law action until an equitable defense may be heard will not lie if the defense is one which is completely available in the law action. The test is whether the defendant could have maintained a bill in equity on the same averments. P. 293 U. S. 383.
of their falsity and fraudulently for the purpose of obtaining the insurance, is completely available in the action at law, and therefore affords no basis for a stay under Jud.Code § 274b. P. 293 U. S. 384.
4. In an action on a life insurance policy in which the plaintiff was its sole beneficiary and in which the defendant insurance company sought the remedy of cancellation upon the ground of fraud in the application, and tendered the amount of the premiums to the plaintiff, held that there was no merit in the company's contention that, because the executors of the insured, who were not made parties, would be entitled to the refund if the defense of fraud prevailed, the remedy at law was inadequate. P. 293 U. S. 385.
Certiorari to review the affirmance of a decree of the District Court staying an action at law on an insurance policy to await the hearing of an equitable defense interposed by the Insurance Company.
was made a part of the policy. These statements consisted of the applicant's answers to questions with respect to hospital observation or treatment and to his consultations with physicians. Respondent alleged that, while the applicant had answered these questions with an unqualified negative, he had in fact repeatedly consulted physicians for neurosis and cardiac disease, and had twice been the subject of hospital observation. Respondent further alleged that these answers were made by the applicant "with knowledge of their falsity and fraudulently for the purpose of procuring said insurance." Respondent tendered judgment for the premiums received by it, with interest, and prayed for cancellation of the policy. Petitioner, in her reply, denied that the answers in the application were either false or fraudulent.
Respondent then presented a petition asking that the "equitable issue" raised by the affidavit of defense and the plaintiff's reply should be heard pursuant to § 274b of the Judicial Code (28 U.S.C. § 398) "by a chancellor according to equity procedure in advance of the trial by jury at law of any purely legal issues." The District Court entered a rule to show cause why the petition should not be granted, and, on hearing, made the rule absolute. Its decree was affirmed by the Circuit Court of Appeals. 70 F.2d 728. This Court issued writ of certiorari, October 8, 1934.
First. A preliminary question arises as to the jurisdiction of the Circuit Court of Appeals. The decree of the District Court was interlocutory, and the question is whether it can be considered to be one granting an injunction, and thus within the purview of § 129 of the Judicial Code, as amended (28 U.S.C. § 227), permitting appeal.
"proceedings at law and proceedings in equity in the national courts and between the powers of those courts when sitting as courts of law and when sitting as courts of equity."
Per Van Devanter, J., in Griesa v. Mutual Life Insurance Company, 165 F. 48, 50-51.
of separate courts. Liberty Oil Co. v. Condon Bank, 260 U. S. 235, 260 U. S. 242-243. The trial of the issue at law may be postponed until the equitable issue is first disposed of, and then, if an issue at law remains, it is triable by a jury as the Seventh Amendment requires. Id.
It is thus apparent that, when an order or decree is made under § 274b, requiring, or refusing to require, that an equitable defense shall first be tried, the court, exercising what is essentially an equitable jurisdiction, in effect grants or refuses an injunction restraining proceedings at law precisely as if the court had acted upon a bill of complaint in a separate suit for the same purpose. Such a decree was made in the instant case, and, therefore, although interlocutory, it was appealable to the Circuit Court of Appeals under § 129, as amended. See Ford v. Huff, 296 F. 652, 658; American Cyanamid Co. v. Wilson & Toomer Fertilizer Co., 62 F.2d 1018, 1019-1020. Compare Ementon Refining Co. v. Chambers, 14 F.2d 104.
Second. We come to the merits. Was the defense set up by the defendant of such a nature that defendant was entitled to have it heard and determined in equity, and to enjoin the proceedings at law pending that determination? The test under § 274b is whether the defendant could have maintained a bill in equity on the same averments. The unequivocal language of the provision leaves no room for the argument that the substantive jurisdiction of equity was sought to be changed or enlarged. The defendant's rights to a hearing in equity are "the same," not greater, when he resorts to the summary procedure.
See Liberty Oil Co. v. Condon Nat. Bank, supra; Union Pacific R. Co. v. Syas, 246 F. 561, 565; American Cyanamid Co. v. Wilson & Toomer Fertilizer Co., supra; New York Life Insurance Co. v. Miller, 73 F.2d 350. Compare Phillips-Morefield v. Southern States Life Ins. Co., 66 F.2d 29, 30; New York Life Ins. Co. v. Marotta, 57 F.2d 1038. And it necessarily follows that this summary procedure cannot aid the defendant when a bill for the same relief would not lie because the defense is one which is completely available in the action at law. Emphasizing the fundamental principle of the equitable jurisdiction, the Congress, from the first Judiciary Act, has declared that suits in equity shall not be sustained in any court of the United States in any case where a "plain, adequate and complete remedy" may be had at law. Act of September 24, 1789, § 16, 1 Stat. 82, Jud.Code, § 267, 28 U.S.C. § 384.
was solely that the defendant had been induced to issue the policy by false answers in the application which were alleged to have been made by the applicant "with knowledge of their falsity and fraudulently" in order to obtain the insurance. The affidavit of defense showed nothing whatever as a further ground for equitable relief, and the respondent is necessarily confined to the case it made. In such a case, the defense of fraud is completely available in the action at law, and a bill in equity would not lie to stay proceedings in that action in order to have the defense heard and determined in equity. Phoenix Mut. Life Ins. Co. v. Bailey, 13 Wall. 616, 80 U. S. 623; New York Life Ins. Co. v. Bangs, 103 U. S. 780, 103 U. S. 782; Cable v. United States Life Ins. Co., 191 U. S. 288, 191 U. S. 305; American Mills Co. v. American Surety Co., 260 U. S. 360, 260 U. S. 363; New York Life Ins. Co. v. Marshall, 23 F.2d 225; New York Life Ins. Co. v. Miller, supra. Respondent was in no better position under § 274b.
Nor is there merit in the contention that the remedy at law is not adequate because petitioner is not the only person interested in the policy, and that the premiums paid would be refundable to the decedent's executors. The executors have no interest entitling them to enforce the policy. Petitioner is the sole beneficiary of the policy, and is entitled to recover upon it if it is valid, and cannot prevail if the defense of fraud is established. Insurance Co. v. Bailey, supra; Cable v. United States Life Ins. Co., supra. The affidavit of defense raised no question as to petitioner's standing as beneficiary of the policy, and, indeed, it expressly offered judgment in favor of the petitioner for the amount of the premiums in accordance with a tender previously made.
District Court, with direction to vacate its order for a hearing in equity and to proceed with the trial of the action at law.
"Equitable defenses and equitable relief in actions at law. In all actions at law, equitable defenses may be interposed by answer, plea, or replication, without the necessity of filing a bill on the equity side of the court. The defendant shall have the same rights in such case as if he had filed a bill embodying the defense of seeking the relief prayed for in such answer or plea. Equitable relief respecting the subject matter of the suit may thus be obtained by answer or plea. In case affirmative relief is prayed in such answer or plea, the plaintiff shall file a replication. Review of the judgment or decree entered in such case shall be regulated by rule of court. Whether such review be sought by writ of error or by appeal, the appellate court shall have full power to render such judgment upon the records as law and justice shall require."
See Mutual Life Ins. Co. v. Hurni Packing Co., 263 U. S. 167, 263 U. S. 177; Jefferson Standard Life Insurance Co. v. Keeton, 292 F. 53, 54; Jefferson Standard Life Insurance Co. v. McIntyre, 294 F. 886; Jones v. Reliance Life Ins. Co., 11 F.2d 69, 70; Peake v. Lincoln National Life Ins. Co., 15 F.2d 303, 305, 306; Keystone Dairy Co. v. New York Life Ins. Co., 19 F.2d 68; Rose v. Mutual Life Ins. Co., 19 F.2d 280, 282; Brown v. Pacific Mutual Life Ins. Co., 62 F.2d 711, 712.