Tribute, Inc. v. dotPartners, LLC
Claim Number: FA0204000109702
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.
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.
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.
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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