Continental Airlines Inc. v. Emmett
Hodges Jr.
Claim Number: FA0204000109725
PARTIES
Complainant
is Continental Airlines Inc.,
Houston, TX (“Complainant”) represented by W.
Scott Brown, of Vinson & Elkins
L.L.P. Respondent is Emmett Hodges Jr., Loveland, OH (“Respondent”)
represented by Scott J. Fields, of Obermayer Rebmann Maxwell & Hippel LLP.
The
domain name at issue is <businessfirst.biz>,
registered with Register.com.
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 16, 2002; the Forum
received a hard copy of the Complaint on April 18, 2002.
On
April 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 8, 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 8, 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.
A.
Complainant
Complainant
contends that it is the owner of the name, trademark and service mark,
“business first” and many variations thereof.
On one of its many U.S.A. trademark registrations, a date of first
claimed use of July 2, 1985 is indicated.
Complainant alleges that Respondent has registered <businessfirst.biz>, the domain name at issue, and that this
domain name is identical to the trademark in which Complainant has rights. Further, Complainant alleges that the
Respondent is not commonly known as “businessfirst” and that he has not used or
made demonstrable preparations to use the domain name at issue in the bona fide
offering of goods or services. Finally,
Complainant says that Respondent’s registration was in bad faith due the fact
that “businessfirst” is a famous mark associated with Continental Airlines and,
accordingly, the Respondent must have known that the registration of the domain
name at issue would disrupt the business of Continental Airlines. Also, it is alleged, without support, that
the Respondent intends to attract, for commercial gain, internet users to his
website or another linked on-line location by creating a likelihood of
confusion with Complainant’s trademark and service mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s website or linked
on-line location or of a product or service offered there.
B.
Respondent
The
Respondent does not deny that the domain name at issue is identical to a
trademark or service mark in which the Complainant holds rights. However, Respondent alleges that there are
many uses of the mark “businessfirst”, some of which enjoy U.S.P.T.O.
registration, and that, accordingly, the Complainant holds rights in the
trademark and service mark it shares with many others, including the
Respondent. Further, the Respondent
alleges that it has been using “business first” in connection with the heating,
ventilation and air conditioning (HVAC) business for two years (presumably well
before any notice of a dispute with respect to its anticipated use of the
domain name at issue). The Respondent
notes that others than the Complainant or the Respondent own the top level
domains: <businessfirst.com>, <businessfirst.net>, and <businessfirst.org>,
without apparent objection from Complainant.
Thus, infers the Respondent, it is not he who has prevented the
Complainant from obtaining a domain name companion to its trademark. Finally, Respondent denies any bad faith
registration of the domain name at issue which is being used in support of a
slogan in his HVAC business.
The
Complainant has clearly demonstrated that the Respondent has registered the
domain name at issue and that it is identical to an extensively registered
trademark and service mark in which the Complainant holds rights. It matters not that “.biz” has been added to
that mark. . See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN
Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the
“.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored,
when determining whether the domain name is identical to a mark in which the Complainant
has asserted rights).
However,
the Respondent has provided proof of numerous other U.S.P.T.O. and assumed name
registrations of “BUSINESS FIRST” in banking services, educational services,
computer e-commerce software, copier supplies, art furniture, consulting
services, business consultation, long distance telephone services, etc. Simply put, Complainant’s trademark and
service mark may have some ability to identify the source or sponsorship of
goods and services in the airline industry, but it shares the mark with
numerous other legitimate users in other fields of endeavor, including the
Respondent in the HVAC business. It is
noteworthy that the Complainant is not the registrant of the domains: <businessfirst.com>, <businessfirst.net>, and <businessfirst.org>.
There
is authority for the proposition that a Respondent cannot depend for its
demonstration of use or interest in a domain name on the activity of a third
party. See Seagate Tech. LLC v. TC
Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent
cannot assert the rights of a third party to demonstrate rights or legitimate
interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not
formally intervened in the proceeding.
However, in this case, the Respondent has provided evidence in the form
of advertising copy to demonstrate its own prior use and legitimate interests
in the domain name at issue.
Accordingly,
it can hardly be said, in light of the prior use, that the Respondent
registered <businessfirst.biz>
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:
(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.
This
Panelist finds that Complainant does have rights and legitimate interests in a
trademark and a service mark which is identical to the domain name at issue.
Accordingly,
Paragraph 4(a)(i) of the STOP Policy has been satisfied by Complainant.
This
Panelist finds that Respondent has proven rights and legitimate interests in
respect of the mark or domain name at issue. Accordingly, Paragraph 4(a)(ii) of
the STOP Policy has not been satisfied by Complainant.
This
Panelist finds that Respondent did not register the domain name at issue in bad
faith.
Accordingly,
Paragraph 4(a)(iii) of the STOP Policy has not been satisfied by Complainant.
DECISION
The Panelist finds that the Complainant
has not satisfied all of the requirements of Paragraph 4 of the STOP Policy
and, accordingly, it is ordered that the domain name at issue, <businessfirst.biz>, not be
transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 1, 2002
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