Tribute, Inc. v. dotPartners, LLC
Claim Number: FA0204000109702
PARTIES
Complainant is
Tribute, Inc., Hudson, OH (“Complainant”) represented by Timothy M Reynolds, President, of Tribute, Inc. Respondent is dotPartners, LLC, Livingston, NJ (“Respondent”) represented by Ari Goldberger, of ESQWIRE.COM.
The domain name at issue is <tribute.biz> (the “Domain Name”), registered with TLDs, Inc.
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.
Robert A. Fashler 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 June 6, 2002.
On July 9, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of July 29, 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 29, 2002.
On August 9, 2002, pursuant to STOP
Rule 6(b), the Forum appointed Robert a. Fashler, the single Panelist.
Transfer of the domain name from Respondent to Complainant.
A. Complainant
Complainant asserts that:
(a)
it
has used the trademark TRIBUTE continuously in interstate commerce since at
least September of 1989 in association with Complainant’s main product, the
TRIBUTE Software System, as well as in Complainant’s corporate name;
(b)
The
Domain Name entirely incorporates Complainant’s trademark TRIBUTE;
(c)
“there
is no evidence that” Respondent is the owner or beneficiary of a trademark or
service made identical to the Domain Name or that, before receiving notice of
the dispute, Respondent used or demonstrated preparations to use the Domain
Name, or a name corresponding to it, in connection with a bona fide offering of goods and services;.
(d)
Respondent
has not been commonly known by the Domain Name and has not acquired trademark
or service mark rights in the Domain Name;
(e)
Complainant
is not aware of Respondent’s motivation for registering the Domain Name.
B. Respondent
Respondent asserts that:
(a)
the
Complaint is wholly deficient because it fails to allege that the Domain Name
was registered or used in bad faith;
(b)
Complainant
has no enforceable trademark rights as:
(i)
it
only has a pending trademark application,
(ii)
it
has not alleged the existence of common law trademark rights, and
(iii)
it
has not submitted any evidence to support the existence of common law trademark
rights;
(c)
the
word “tribute” is a common dictionary word that Respondent intends to use for a
celebrity fan information website;
(d)
the
word “tribute” is commonly used by third parties;
(e)
Complainant
has not provided any evidence that Respondent registered the Domain Name with
Complainant in mind or has in any other way acted in bad faith; and
(f)
by
filing the Complaint, Complainant has engaged in reverse domain name hijacking.
The word “tribute” is not descriptive of
software, which is the product for which Complainant says it uses the trademark
TRIBUTE. Although it is possible that
Complainant might, in fact, have common-law trademark rights in TRIBUTE, the
Complaint provides no evidence of use, reputation, or goodwill in support of
the assertion of use. Complainant has
applied to register TRIBUTE in the U.S. Patent and Trade-mark Office, but that
application has not issued to registration.
Complainant has not provided any evidence
to support the assertion that Respondent lacks rights or legitimate interests
in respect of the Domain Name.
Complainant does not assert, and provides
no evidence to show, that the Domain Name has been registered or is being used
by Respondent in bad faith.
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:
(a)
the
Domain Name is identical to a trademark or service mark in which the
Complainant has rights; and
(b)
the
Respondent has no rights or legitimate interests in respect of the Domain Name;
and
(c)
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.
Complainant’s
Rights in the Mark
Although the Domain Name is identical to the trademark
asserted by Complainant, Complainant has not provided any evidence supporting
its assertion of rights in the trademark TRIBUTE. It is not sufficient to assert a pending trademark application or
mere use. See Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat.
Arb. Forum, Feb. 6, 2002).
The Panel finds that Complainant has failed to prove that it
has trademark rights in the trademark TRIBUTE and, therefore, has failed to
meet its burden in respect of Policy ¶4(a)(i).
Respondent’s
Rights Or Legitimate Interests
Complainant bears the burden of proving every element of the
Policy. Because it is relatively
difficult for any Complainant to prove that a Respondent lacks rights or
legitimate interests in a domain name, the burden on a Complainant in respect
of this element must be relatively light.
Nonetheless, a Complainant must provide some information tending to show
that the Respondent lacks rights or legitimate interests. It is not sufficient merely to assert that
Respondent does not have rights or legitimate interests in respect of the
Domain Name or that there is no evidence of same. At a minimum, a Complainant should conduct relevant searches and
provide the search results together with the Complaint.
The Panel finds that Complainant has failed to prove that
Respondent has no rights or legitimate interests in respect of the Domain Name
and, therefore, has failed to meet its burden under Policy ¶4(a)(ii).
Registration Or Use In Bad Faith
The Complaint does not assert bad faith. Complainant says nothing more than: “We are
not aware of respondent’s motivation for registering the domain name.” As well, Complainant did not provide any
evidence that might support a finding of bad faith by Respondent.
The Panel finds that Complainant has
neither asserted nor provided any evidence of bad faith on the part of
Respondent and, therefore, has failed to meet its burden under Policy ¶4(a)(iii).
Respondent Asserts that Complainant has
acted in Bad Faith in filing and pursuing the Complaint and has requested a
finding of Reverse Domain Name Hijacking
The Panel is struck by the naivety
reflected in the Complaint. For
example, Complainant was entirely candid in admitting that it is not aware of
Respondent’s motivation for registering the Domain Name. In the Panel’s view, the Complaint indicates
a lack of sophistication and ignorance of legal process rather than bad
faith.. See Credit Suisse Group o/b/o Bank Leu v. Leu Enterprises Unlimited, FA
102972 (Nat. Arb. Forum, Feb. 23, 2002).
The Panel declines to find that Complainant has engaged in reverse domain
name hijacking.
DECISION
Having failed to establish all three
elements required under the Start-Up Trade-mark Opposition Policy, the Panel
concludes that relief shall be hereby denied. Accordingly, it is Ordered that the Complaint be dismissed. No further challenges against this domain
name are currently pending under the STOP Policy.
Robert A. Fashler, Panelist
Dated: August 20, 2002
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