About Inc. v. Andalus
Claim Number: FA0204000109726
Complainant is About Inc., New York, NY, USA (“Complainant”) represented by Jessica Hirsch. Respondent is Andalus, Cairo, EGYPT (“Respondent”) represented by Ahmed Omar.
The domain name at issue is <about.biz>, registered with BulkRegister.com, 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.
G. Gervaise Davis III, Esq., Monterey, California, USA is the single 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 17, 2002.
On April 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 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 6, 2002.
On May 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed G. Gervaise Davis III, Esq. as the single Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
[a.] Complainant states that it is a wholly owned subsidiary of PRIMEDIA Inc. Complainant has been in operation since 1996 and, according to the March 2002 Jupiter Media Metrix Survey (released on April 15, 2002), its family of web sites located at <about.com> is currently the 5th most popular United States internet site with over 36 million users and the 7th most popular global internet site with over 38 million users. In addition to providing news, information and community services, Complainant also has a substantial e-commerce component to its web sites. Complainant has substantial brand awareness in the United States and internationally.
Complainant is the registered owner of the trademark “About.com” in the United States, Australia, Mexico and Japan and has additional pending applications for the mark in the European Union, New Zealand and the United States.
Complainant is also the registered owner of the trademark “About” and “About (stylized)” in the United States, Japan and Germany and has applications pending for additional trademarks for “About” and “About (stylized)” in the United States, Japan, Canada, the European Union, Germany, Australia, New Zealand and Mexico.
Complainant owns the domain name <about.com> (or derivations thereof) in the United States, Canada, Mexico, Hong Kong, Ireland and Germany.
Complainant provided the Panel with a series of exhibits demonstrating the existence of Complainant’s registered trademarks and a number of pending applications in various countries.
To Complainants knowledge, Respondent does not own and has never applied (other than its current attempt to register <about.biz>) for any use of the “about” mark.
[b] Complainant further states that Respondent has provided minimal contact information and no information concerning its business or operations making it impossible for Complainant to comment on Respondent’s business. However, Complainant is not aware of any use by Respondent of the “About” name and Respondent has never made a claim to the “About” name.
Through its investigation, Complainant has discovered that Respondent either owns or operates a company called ArabicDomains4All. In addition, Complainant claims Respondent registered the <about.biz> name through a bulk registrar in an effort to register as many domain names as possible. Furthermore, Respondent uses as a contact email address email@example.com and also owns the domain name <arbdomains.com>, clearly a derivation of the word “arbitrage,” which means the act of buying and selling at high profit with no risk. All of this evidence clearly indicates that the business of Respondent is buying and selling domain names and not using them for legitimate business purposes. Currently, there is no operating web site at <about.biz>, further indicating that Respondent has no intent to use the <about.biz> domain name for a legitimate business purpose.
[c.] Respondent has not provided any legitimate basis to register the <about.biz> domain name. Respondent’s actions indicate it either (i) has registered bulk domains in an effort to sell them back to rightful owners for a profit or (ii) intends to confuse users expecting to visit the <about.com> web site by entering the domain name <about.biz> in an effort to drive traffic away from Complainant’s web sites. Either action would cause substantial damage to About’s business operations and reputation.
[a.] Respondent concedes that the domain name <about.biz> is identical to a service mark in which Complainant has non-exclusive rights.
[b.] Respondent further asserts that (1) he has as much rights and legitimate interests in respect of the highly generic domain name that is the subject of the Complaint as anyone else in the world who has serious interest in conducting business on the Web, and that (2) he also has particular legitimate interests in respect of the same:
(1) Every individual and institution having interest in establishing presence on the Web will undoubtedly be eager to reserve a domain name that is both relevant to his/her/its interest, and as easy as ever possible for visitors to remember. The word “about”, being a preposition, adverb, and adjective, is at the very core of the English language. This puts it at a level of public usability that might even be higher than to be described as simply “generic”, and also makes it extremely attractive to many seekers of a suitable domain name for their presence on the Web. A search on the word “about” on AltaVista produced links to 90,764,963 documents on the Web containing well over 223,000,000 occurrences of the said word. Among those documents, he failed to track one document referring to Complainant’s web-site before giving up at the count of 500, which serves any claims of fame, distinctiveness, or secondary meaning very poorly. Also Complainant had obviously not managed to arrange with Altavista for preferential listing as of the date on which the mentioned search was performed.
Requiring Respondent to relinquish the domain name that is the subject of the complaint simply because Complainant or any other party managed to register a Trade or Service mark that is identical to a preposition is in Respondent’s belief highly unjustified. Allowing this to happen could result in other parties attempting to monopolize domain names at all gTLDs based on similarly essential words of the English language such as “and”, “but”, “if”, etc., without even registering such domain names in a timely fashion. Indeed, Complainant has not demonstrated enough initiative to utilize its alleged rights in securing for itself matching domain names under other gTLDs such as <about.net>, <about.us>, or <about.org>. [The Panel notes that <about.net> and <about.org> appear to belong to other registrants and have for some time.] Neither has Complainant, to the best of Respondent’s knowledge, filed Complaints requiring transfer of any or all of such domains to Complainant based on the same grounds that Complainant based its complaint against Respondent. Even with the domain name that is the subject of the Complaint, Complainant failed to utilize the intellectual property owner pre-reservation provision for the ".biz" registry as provided by NeuLevel. Such lack of initiative becomes less ambiguous by taking into consideration the fact that Complainant has until very recently been solely interested in the compound mark of “about.com”, with the “.com” component an integral constituent rather than a mere gTLD designation. This is clearly proven by the preponderance of “about.com” service marks, including the graphic logo, registered by Complainant, as documented in exhibits attached to the Complaint. As a matter of fact, until the date of writing its Response, Complainant is referred to in all official documents as About.com, Inc. in spite of Complainant’s unsupported statement that “About.com, Inc. changed its name to About, Inc. as of January 31, 2002.” Even if true, such change is predated by Respondent’s pre-registration for <about.biz> on 8/12/2001.
(2) Respondent is an active entrepreneur with a solid technical background and a mission to “[P]romote the use of the Web by Arab business owners to further their interests and to establish intimate business ties at Pan-Arab and international levels.” As utilization of the Internet and the Web in many parts of the Arab world is still not fully understood and demonstrated, Respondent has vowed to make extraordinary efforts to establish a better perception and to facilitate establishment of presence on the Web for many Arab businesses. Such efforts included reservation of domain names on behalf of others, developing web-sites for them, and attempts to establish a “meeting trade-point” on the Web, where all parties interested in developing and expanding their businesses could “convene” electronically.
Although Respondent has helped several Arab business entities to acquire domain names (e.g. <tibamed.com>, <sisegypt.com>, <simulaworks.com>, <galaxyegypt.com>, <alnoorway.com>, <Design-Valley.com>) and to utilize them, Respondent has not once charged any of those entities for such services. All contact persons registered for the mentioned domain names maybe contacted for confirmation, and respective Registrars will confirm that the domains were processed through Respondent’s accounts at their ends, with no transfer activity on any of those domains. Such is not the pattern of work followed by a cybersquatter. As a matter of fact, all efforts exerted by Respondent in this regard have been to date of a totally non-profit nature. Respondent hopes to start making profits out of advertising on the contemplated online trade-point.
Additionally, Respondent claims to have been preparing for the activation of Arabic domain names (which have been announced by Internet authorities but are not yet activated) and encouraging other Arab businesses to do the same. Accordingly, Respondent states he has been seeking domain names that would serve such purposes to the best possible extent such as: <arabicdomains4all.com> and <arbdomains.com> for the promotion of Arab-related domain names, and <abodomain.com> (registered since 5/24/2001) to serve as a springboard for the contemplated Arab Businesses Online (hence the abo prefix) meeting trade-point. Knowing that the domain name <about.biz> was available for registration seemed to be a golden opportunity to acquire a more elegant name for Respondent’s Arab Businesses Online Uniting Trade-point (ABOUT).
A. The Complainant has established trademark rights in the names “About.com” and “About,” based on use and registration or pending registrations of both marks, and based on common sense the domain name <<about.biz>> is identical for all practical purposes to these marks. The purpose of the gTLD .biz was to provide for business users and Complainant is a business user of these marks.
B. The Respondent has proven no rights or legitimate interests in the domain name at issue, although he has presented various arguments attempting to do so, based on his plans to develop Arab Internet sites and businesses.
C. The Respondent has registered the domain in bad faith, although there is no evidence that he has actually used it for any purpose. The STOP Rules require only registration or use. Respondent acknowledges registration of 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.
Complainant owns various trademark registrations and pending registrations, established by numerous exhibits submitted by Complainant, all of which show or allege use of both the marks “About” and “about.com,” so Complainant satisfies STOP Policy ¶ 4(a)(i). Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.biz” is irrelevant in determining whether or not a domain name and mark are identical; so the mere addition of “.biz” to Complainant’s ABOUT mark does not distinguish <about.biz> from Complainant’s ABOUT mark or its ABOUT,COM 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 the disputed domain name is not a factor and is to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).
Respondent raises, as a defense, an often valid argument that merely because a Complainant has a trademark on a generic or common name does not establish that the Complainant can always prevent others from using the mark as a domain name. Respondent is correct that under existing trademark law the trademark owner is not the “owner” of the word making up the mark and does not have exclusive rights to the use of the mark for all purposes. As Justice Holmes observed, "A trademark does not confer a right to prohibit the use of the word or words….[by others]…. A trademark only gives the right to prohibit the use of it so far as to protect the owner's goodwill against the sale of another's product as his." Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). This fact is demonstrated by the existence of the various classes of trademark use authorized by the law, whereby numerous parties hold trademarks using the same word or phrase, and there are cases where more than one company have a registered mark in the same trademark class. For example, the word “LAVA” has 176 listed registrations and of those 48 are for the single word “LAVA” in various classes and some in the same class. The issue of whether others can also use a word or a term is always whether the mark and the intended use would likely cause confusion of the public or tend to mislead. See, for example, 15 U.S.C. §1114(1)(a) on the applicable standard for confusion.
Complainant asserts that Respondent does not own and has never applied for any use of the ABOUT mark and that, therefore, Respondent has not met the burden of establishing ownership in a mark pursuant to STOP Policy ¶ 4(c)(i). The Panel agrees that this is true and that it supports a part of Complainant’s case, but Respondent can also establish a legitimate interest in the domain name by showing evidence of an existing business plan and steps taken in furtherance of the plan. See the discussion of the effect of such a plan in Giddings & Lewis LLC v. McKean d/b/a Machineworks, Inc. d/b/a IMachineTools.com, D2000-1150 (WIPO Mar. 14, 2001) and STOP Policy ¶4(c)(ii) explaining the defense.
Here, Respondent does argue that his work in helping others start Arabic businesses on the Internet, and his own organizational plan “for the contemplated Arab Businesses Online” provide indicia of a legitimate plan for the use of the disputed domain name. Unfortunately, mere general plans to do some undefined business that might have a use for the name have not been held sufficient to demonstrate “legitimate interests” in the name. See, Grupo Financiero Inbursa, S.A. de C.V. v. Delgado-Ayala, D2001-0172 (WIPO Mar. 27, 2001), rejecting generalized plans to start a business that neither mention the domain name in question nor discuss the use of a similar business name. For this reason, the Panel does not believe the arguments of Respondent meet the requirements of the Rules and Policy on this point.
The fact remains that Respondent had at the time of registration and presently has no business under this name, and has asserted nothing more than an idea that it might be useful as an acronym for some future entity to be called “Arab Businesses Online Uniting Trade-point” which would be able to operate with the domain name <about.biz>.” The balance of his argument essentially consists of an assertion of his continuing assistance to others in establishing businesses and domain names for other Arab businesses, which, while perhaps admirable, does not establish any demonstrable plan for the specific use of this specific domain name. In the judgment of the Panel none of this conduct or evidence meets the requirements for showing a legitimate interest in the name, so that it does not constitute a defense under this section of the Rules.
Respondent has presented a number of possible reasons why his registration of the domain name at issue was in good faith. The Panel feels that, while these reasons are very imaginative, they are not valid reasons or justification for the registration of a highly valuable domain name in which Registrant had no prior rights or interest and no specific plans to use. Merely because someone decides to register a domain name, using a mark clearly in wide and well-known use internationally by another on the Internet, does not justify attempting to trade on the value of that mark, nor give them a valid reason to register it. As mentioned in the discussion concerning Rights, the mere fact someone contemplates using various domains or words in potential businesses is not sufficient evidence of established rights, nor of good faith registration.
Candidly, Respondent’s argument that prior use of the prefix “ABO” taken from <abodomain.com > provided him “a springboard and opportunity to acquire a more elegant name for Respondent’s Arab Businesses Online Uniting Trade-point (ABOUT)” stretches credulity to the breaking point. At best, it is an implicit admission that Respondent had no good faith reason for registering <about.biz>, and at worst it suggests that Respondent has merely made up arguments after the fact to justify registering a domain name that obviously would be confused with Complainant’s well-established Internet business.
As Complainant points out, the <About.com> website and portal is and has been well known internationally since 1996, and virtually any use of such domain, with a new gTLD like .biz is likely to confuse the public into believing that it is associated with the owner of the gTLD .com using the same mark. The fact that Respondent does not presently use the disputed domain name in connection with any bona fide offering of goods and services and that he provides no real explanation of how he planned to use it strongly suggest that he registered it because it would opportunistically steer users from Complainant’s <about.com> site to his <about.biz> site. See, Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore, [as in the instant case] Respondent had no rights or legitimate interests and registered it in bad faith); see also, Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)).
On balance, the Panel is of the opinion that Respondent’s arguments establish no good faith reason for registering the domain in question, other than to confuse the public or to eventually sell the domain to the owner of the mark, or perhaps to prevent Complainant from registering the name and force some later offer for purchase of it. From the scant evidence of why Registrant really registered the domain, it is certainly, for example, possible that Respondent registered <about.biz> in order to prevent Complainant from doing so based on the fact that Complainant’s <about.com> is the seventh most popular global Internet site with over thirty-eight million users. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark). It is difficult for this Panel to accept the argument that Respondent was unaware of an Internet portal in existence for five years and among the top five or six such portals in the world.
In the judgment of the Panel, Respondent has demonstrated no valid reason for his registration of the domain name, and has relied on what this Panel feels are contrived arguments that themselves seem indicative of bad faith on the part of the Registrant. Absent the opportunity to see the parties in person, the Panel can only rely on its impression of the words of each party, in determining good faith and veracity.
The Complainant has prevailed on all three required allegations; therefore, the domain name <about.biz> is ordered transferred to Complainant. Furthermore, pursuant to the STOP Policy subsequent challenges against this domain name shall not be permitted hereafter.
G. Gervaise Davis III, Esq., Single
Dated: June 6, 2002
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