Burke Inc v. Leader Technologies LLC
Claim Number: FA0112000102822
The Complainant is Burke Inc, Cincinnati, OH (“Complainant”). The Respondent is Leader Technologies LLC, Westerville, OH (“Respondent”) represented by Marcus D. Dunn, of Zacks Law Group, LLC.
The domain name at issue is <digitaldashboard.biz>, registered with Domain People.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.
James Alan Crary as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 12, 2001; the Forum received a hard copy of the Complaint on January 9, 2002.
On January 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on February 25, 2002.
On March 5, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complainant asserted that it owned the registered trademark DIGITAL DASHBOARD and that it therefore had exclusive rights to the name.
Complainant then asserted that in addition to filing an IP claim for <digitaldashboard.biz>, the .biz domain name was pre-registered with the registrar, Net Wizards, Inc. on June 1, 2001. Net Wizards, Inc., it was asserted, never submitted this domain name to the registrar. Had this been done, Complainant would have been awarded the domain name since it was the trademark holder. The Complainant alluded to a communications problem between it and Net Wizards, Inc.
Respondent noted that the Complainant had failed to prove any of the three elements set forth in paragraph 4(a) of the STOP Policy.
Respondent maintained that the Complainant failed to state a dispute or claim as it related to the .biz top-level domain. The Complainant lists <digitialdashboard.com>, as the subject of the complaint, noting that the purpose of the STOP proceedings is to resolve disputes specific to the registration of .biz top-level domain names only.
The Complaint was also deficient in that it did not specify the “goods or services” with which the alleged mark were used. Nor did the Complaint state if there were goods or services used in connection with the mark. Respondent maintained the Complaint should be dismissed without any further consideration.
The Complainant failed to allege specific factual or legal grounds, merely alleging that it “owns” the registered trademark. The fact that the Complainant had registered the servicemark “DIGITAL DASHBOARD” does not by itself prove that the Complainant had right to attain and maintain such a trademark or service mark.
The Complainant failed to provide any information or evidence as it related to the three elements which Complainant was required to prove under the STOP Policy. See STOP Policy 4(a) and STOP Rule 3(c)(ix). The complaint should therefore be dismissed because of the lack of specificity of facts which would allow the Panel to decide the dispute.
Respondent acknowledged that the Complainant had registered and used <digitaldashboard.com> but that domain name was not the subject of the dispute. Respondent urged that its <digitaldashboard.biz> would not cause confusion or divert customers, current or future.
The Respondent was in the business of software development of business applications whereas the Complainant was a business consultant in fields not including software or technology in general.
The Respondent’s use of Digital Dashboard in its materials presentations and components of its products predates Complainant’s alleged first use in the public domain by more than 12 months. In addition to Digital Dashboard, Respondent used Digital Score Cards, Digital Leader Board, and Digital Project Board.
Further details concerning the Respondents use of Digital Dashboard in various states between 1997 and the present were set forth.
Respondent noted that the Complainant did not allege or contend that it had rights or legitimate interests in respect to the domain name <digitaldashboard.biz>. It’s right to the DIGITAL DASHBOARD mark was not exclusive since there were several companies that utilize the mark at their own web sites to describe their businesses and services.
Respondent went on to describe plans for future software releases. <Digitaldashboard.biz> would be combined with Respondents 450 domain names, 2000 copyrights, and over 400 trademarks in advancing and refining its software offerings.
The Respondent noted that the Complainant does not allege nor contend that the Respondent had registered or used the domain name in bad faith. Respondent maintains that it registered the domain name in good faith for the dissemination of its products to the public at the appropriate time.
Respondent’s business did not compete with the Complainant’s services. There was no showing that the domain name was registered with the intent to confuse and Respondent maintained that there was no showing of current confusion with Complainant’s alleged marks. Respondent denied that it registered the domain name with the intent to sell it to anyone or other bad faith use under the STOP Rules.
1. The Complainant fails to state the necessary elements to establish entitlement to relief under the STOP Policy.
2. The Respondent has rights and legitimate interests in the disputed domain name <digitaldashboard.biz>.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
STOP Rule 3(c)(viii) requires that the Complaint specify the trademark(s) or servicemark(s) on which the complaint is based and, for each mark to describe the goods or services, if any, with which the mark is used (the Complainant may also separately describe other goods and services for which it intends, at the time the Complaint is submitted, to use the mark in the future).
STOP Rule 3(c)(ix) requires the Complaint to describe, in accordance with the Policy, the grounds on which the Complaint is made including, in particular, (1) the extent to which the domain name(s) is/are identical to a trademark or servicemark in which the Complainant has rights; (2) why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the Complaint; and (3) why the domain name(s) should be considered as having been registered or used in bad faith …
The Complaint wholly fails to meet the criteria set forth in the STOP Rules above cited. The Complaint consists of a bare allegation that it holds a trademark to DIGITAL DASHBOARD without any supporting evidence or proof. Complainant does not describe the goods and services if any used in the past or planned for the future. The Complaint does not describe the manner in which it acquired trademark rights, whether it was registered, based on common law, or acquired from others. Further, the Complaint does not address any of the three elements necessary to establish transfer of the disputed domain name.
The Panel will not erect castles in the air in order to make a case hypothetically where the Complainant wholly fails to meet its obligations under the Rules to set forth the grounds on which the Complaint is based and the supporting evidence. Since the Complainant has not provided any evidence of rights in any trademark or servicemark, the first condition of paragraph 4(a) of the STOP Policy was not met, and the Panel need not consider the matter further. See Powrachute, Inc. v. Buckey Industries AF-0076 (e-Resolution, May 30, 2000).
The Respondent met the compliant with a detailed Response which described its business activities, and its prior use of Digital Dashboard in connection with its product offering. Respondent established that it has used the term in connection with its software products and services and other offerings in interstate commerce as well as internationally. Its non-competing goods and services were offered in commerce using the DIGITAL DASHBOARD name twelve (12) months prior to Complainant’s registration. The nature of the rights and legitimate interests was set out appropriate detail in the Response. It was supported amply with documentation in the exhibits.
The Panel concluded that the greater weight of the evidence supported the finding that Respondent had rights and legitimate interests in the disputed domain name.
Since the Panel concluded that Complainant made an insufficient showing to establish rights in the DIGITAL DASHBOARD mark, and that Respondent had rights and legitimate interests in <digitaldashboard.biz>, the Panel directs that the Complaint be dismissed and that subsequent challenges to this domain name as against the Respondent shall not be permitted.
James Alan Crary Panelist
Dated: March 29, 2002
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