fabric.com v. LinZan Song
Claim Number: FA0204000109701
Complainant is fabric.com, Marietta, GA, USA (“Complainant”) represented by Stephen S Friedman. Respondent is Lin Zansong, Wenzhou, China (“Respondent”).
The domain name at issue is <fabric.biz>, registered with Xin Net Corp.
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.
James A. Carmody, Esq., 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 April 12, 2002; the Forum received a hard copy of the Complaint on April 16, 2002.
On April 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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 May 13, 2002.
On May 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant alleges that it has established a common law trademark in the word “fabric” and, in pursuit of its business since July 8, 1998, it has registered <fabric.com> and <fabric.net>. The Respondent has registered <fabric.biz> (the domain name at issue) which is alleged to be identical to a trademark or service mark in which Complainant has claimed rights. Further, the Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue because, to the best of Complainant’s knowledge, Respondent has never used the mark, “fabric.” Finally, Complainant alleges that Respondent registered the domain name at issue in bad faith because it has been unable to find any evidence that Respondent is using the mark in China, its home.
Respondent alleges that “Fabric.com and Fabric.biz is not identical.” Further, Respondent states that FABRIC is a “general word”, which is presumably meant to allege that “fabric” is generic and that, accordingly, Complainant cannot have any protectable rights in the mark. Finally, the Respondent asserts that there are no facts alleged or which exist evidencing bad faith registration of the domain name at issue.
Although Complainant provides no documented support for its position of use of the mark, “fabric,” in light of no claim to the contrary, it will be assumed that it has used the mark and the associated domains, <fabric.com> and <fabric.net>, in support of its business of selling fabric over the Internet since 1998. Other than Complainant’s allegation that to the best of its “knowledge and belief” the Respondent has never used the mark “fabric,” there is nothing offered in the Complaint to show that the Respondent has no rights in the mark or that the Respondent registered the domain name at issue in bad faith.
The threshold question, however, is whether the Complainant has anything to protect. Because I find that “fabric” is obviously generic, particularly in its use by the Complainant “…selling fabric to Internet customers throughout the world…,” I find that Complainant has no protectable rights in the mark. It is thus unnecessary to determine whether Respondent established legitimate interests in the domain name at issue and registered <fabric.biz> in bad faith. Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).
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.
Because “fabric” is a generic term, neither the Complainant, nor the Respondent, have demonstrated protectable rights in such a mark. Accordingly, Paragraph 4(a)(i) of the STOP Policy has not been satisfied.
As noted above, Respondent has not alleged or proved facts which would suggest that “fabric” is anything other than a generic term as used by Respondent. Accordingly, Respondent does not have the right to exclude others from the use of such a mark, as embodied in a domain name or otherwise.
Since the Complainant has failed to demonstrate protectable rights in a mark identical to the domain name at issue, it is not necessary to determine if <fabric.com> was registered in bad faith.
Accordingly, this Panel orders that the domain name at issue, <fabric.biz>, not be transferred from the Respondent to the Complainant. Pursuant to STOP Policy Paragraph 4(l)(ii)(3) subsequent challenges under this Policy shall be permitted.
James A. Carmody, Esq., Panelist
Dated: June 1, 2002
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