Financial Aid.com LLC v. Mark
Schaffhausen
File Number: FA0204000109368
PARTIES
Complainant
is FinancialAid.com LLC (“Complainant”) represented by Donna
Rubelman, Esq., Rubelmann & Associates, Inc., 501 Herondo Street, Hermosa
Beach, CA 90254. Respondent is Mark Schaffhausen, 145 Sherwood Road, Shoreview, MN 55126
(“Respondent”).
The
domain name at issue is <FinancialAid.biz>, registered with 1STDOMAIN.NET
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon, 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”).
The
Complaint was submitted by Complainant
and received by
the Forum on April 8, 2002 .
On
June 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
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 July 11, 2002.
On July 22, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Louis E. Condon as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
There is no dispute that
Respondent’s second-level domain name, FinancialAid, is identical to
Complainant’s service mark, “FinancialAid”. Further, Complainant has
established rights to the disputed domain name because it has used the mark in
commerce. Complainant has further applied to register FINANCIALAID.COM and
FINANCIALAID.COM & Design for financial services in the United States
Trademark Office. In addition, Complainant has an established presence on the
Internet through its <Finaid.com>, <Financialaidadvisors.com>,
<Financialaides.com>, Financialaidform.com>,
<Financialaidforms.com>, <Financialaid.info.info>, <Financialaidinfo.net>,
<Financialaidwebsite.com>, <Financialat.com>,
<Findfinancialaid.com>, and <Financialaide.com> domain names.
Respondent has no known ownership
interest or beneficial interest in the service mark. Accordingly, Respondent
has no rights or legitimate interests in the <FinancialAid.biz> domain name. Further, Respondent’s domain
name is not associated with the bona fide
offering by Respondent of goods or services. Respondent’s domain name is
not associated with an active web site.
Respondent registered the <FinancialAid.biz> domain name in
bad faith. First, Respondent has no trademark rights in the domain name.
Second, Respondent has not used the domain name in connection with an active
web site. Third, Respondent has not used the <FinancialAid.biz> domain name in connection with the bona fide offering of goods or services.
Finally, any Internet user attempting to locate the services provided under
Complainant’s service mark will be mistakenly directed to Respondent’s domain
name.
Complainant’s substantial investment
in the FINANCIALAID name is readily noticeable to anyone accessing the
<FinancialAid.com> web site. Complainant’s use and registration of
numerous closely-related variants of the <FinancialAid.com> domain name
has put the public on notice of Complainant’s substantial financial investment
in the Financial Aid trade name.
In summary, Complainant
postulates that these circumstances suggest that Respondent registered the <FinancialAid.biz> domain name
primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to the Complainant or to a competitor of the
Complainant for valuable consideration in excess of Respondent’s out-of-pocket
costs; preventing the Complainant from reflecting the FinancialAid service mark
in a corresponding domain name; and creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
Respondent’s web site or location.
B.
Respondent
Prior to registering the name <FinancialAid.biz> on March 27,
2002, Respondent conducted a search of the U.S. Trademark & Service Mark
database and found that no one had a trademark or service mark registered for
“financial aid”. Respondent acknowledges he does not have a trademark for
“Financial Aid”. Nor is he aware of. any one else who has a trademark for
“financial Aid”. This term is considered generic and is available for anyone’s
use.
Complainant claims a service mark on the
name Financial Aid. However, Complainant’s application, dated two months after
Respondent received the domain name <FinancialAid.biz>,
is for the name “FinancialAid.Com”. This is clearly different than Financial
Aid and is an attempt to extend rights from FinancialAid.com to the term
Financial Aid. The Complainant had the opportunity to register the term
Financial Aid during the “Sunrise” period for both the .US and .Info
extensions. Given the fact that the Complainant did not receive either of these
extensions clearly overstates the fact that they do not have any legal rights
to the generic term Financial Aid.
Respondent received the domain name
<Scholarship.info> in October of 2001. Immediately after receiving the
name, Respondent designed a website which features ideas and resources for
those searching for scholarships and financial aid, along with other related
services. This site has been in operation for several months at
<Scholarship.info>. Since then,
Respondent has also obtained the domains: <FinancialAid.biz>, <StudentLoans.biz>, <Scholarship.biz>, <Scholarships.US>, and <FinancialAid.US>. Therefore, Respondent claims he has
definitely been using the domain name <FinancialAid.biz>
in good faith and for a bona fide business purpose. The reason that <FinancialAid.biz> is not
currently active is due to the fact that the domain currently has a “Lock” on
it. Any of the other names listed above point to <Scholarship.info>.
In response to confusion caused to a
person trying to locate information on Financial Aid, Complainant may own the
name <FinancialAid.com> but if someone types in <FinancialAid.net>,
<FinancialAid.org>, or any other extension, they will find several
websites that are not affiliated with <FinancialAid.com>.
In summary, Respondent claims: he has a
legitimate right to use the name <FinancialAid.biz>;
the name Financial Aid is a generic term and is not associated with any one
company; no one has a trade mark or service mark on the term Financial Aid; and
he is using the name in good faith as he operates a website offering
information on obtaining financial aid and scholarships.
Solutions
Advancing People, Inc. registered the <FinancialAid.com> domain name
on
June 14, 2000. On January 1, 2001, Complainant FinancialAid.com LLC entered
into a Domain Name Transfer Agreement, obtaining the exclusive rights to the
<FinancialAid.com> domain name. The FINANCIALAID service mark has
identified FinancialAid.com LLC as a provider of educational financial
assistance services since February 1, 2000.
Complainant filed a United States
application to register the service mark FINANCIALAID.COM for financial
services on May 31, 2002. Complainant also filed a United States application to
register the service mark FINANCIALAID.COM & Design for financial services
on May 31, 2002.
Respondent received the domain
name <FinancialAid.biz> on
March 27, 2002. The term “financial aid” is generic and used by many parties.
Respondent’s use of the domain name is for bona
fide commercial purposes.
There is no evidence that the Respondent registered or is using the domain name
in bad faith. The Respondent has rights and legitimate interests in the domain
name.
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.
At the time Respondent received the
domain name <FinancialAid.biz>
the Complainant’s service mark FINANCIALAID.COM was not registered, nor was
there any way the Respondent would have knowledge that Complainant was about to
register it.
The Respondent has an operating
web site, <Scholarship.info>, which features ideas and resources for
those searching for scholarships and financial aid, along with other related
services. Respondent has also obtained a number of domain names of a similar
nature to <FinancialAid.biz>,
all of which point to the web site. One of these, <FinancialAid.US>,
features <FinancialAid.com> on the home page as one of Respondent’s
affiliate partners.
Although Respondent may not have made
actual use of a registered ”.biz” name prior to the filing of a STOP Complaint,
Panels have found that, where the Respondent operated a website at a virtually
identical domain name, such use may fulfill the “use of, or demonstrable
preparations to use” test of STOP Policy Section 4(c)(ii). See American Airlines Inc. v. Webtoast Internet Servs. Inc., FA
102954 (Nat. Arb. Forum Feb 24, 2002).
Registration
or Use in Bad Faith
Some
UDRP Panels have held that even general offers to sell, without a specific
named price, will satisfy the bad faith element of the UDRP. See Am. Anti-Vivisection Soc’y v. “Infa dot
Net” Web Serv., F 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that
“general offers to sell the domain name, even if no certain price is demanded,
are evidence of bad faith”). Complainant offered no evidence that the
Respondent offered to sell or registered the domain name primarily for the
purpose of selling, renting, or otherwise transferring the name to Complainant
or its competitors for valuable consideration in excess of the Respondent’s
out-of-pocket costs directly related to the domain name. Such evidence is
necessary to satisfy the Bad faith requirement of STOP Policy Section 4( b)(i).
Nor did the Complainant offer any decisions which might have interpreted
Respondent’s conduct as bad faith.
STOP claims differ from UDRP claims in
one very significant and fundamental way. Unlike the UDRP, under STOP when a
registrant (Respondent) registers a domain name for which an IP Claim was
previously filed, the registrant is notified of the potential for
trademark infringement before being allowed
to proceed with the registration. One Panel has held that registration
of a domain name despite such notice, in appropriate circumstances, could
“almost preclude any possibility of registration in good faith of a domain
name. See Gene Logic Inc. Bock, FA
103042 (Nat. Arb. Forum Mar.4, 2002).
In this case, the registration did not occur until after the domain name
had been received.
DECISION
The
Complainant having failed to meet the requirements of the STOP Policy and the
Panel having found the registration not to be in bad faith, the domain name “<FinancialAid.biz>” shall be
retained by the Respondent, and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
Louis E. Condon, Panelist
Dated: July 31, 2002
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