About Inc. v. Andalus
Claim Number: FA0204000109726
PARTIES
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
[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 info@arbdomains.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.
B. Respondent
[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.
However,
one of the exceptions to the principle that generic marks or common terms are
not protected from use by others is where the mark has become distinctive or
famous, in which case the law often protects them from further commercial use
in a manner that would “cause dilution of the distinctive quality of the famous
mark.” See, 15 U.S.C. §1125(c)(1) and
(d)(1)(A)(ii)(I) and (II), the U.S. dilution and cybersquatting statutes,
respectively. It is clear from the
allegations of Complainant and quick verification from looking on the Internet
that Complainant’s mark is distinctive and probably famous at least in the
environment of the Internet, as a well-known and well-established portal that
is extensively used by millions of people.
As such, it is clearly protectible as an exception to the general rule
about generic words stated above, especially since the .biz gTLD is intended
only for commercial use by its very terms of use and registration. See, generally, the FAQ section, item 7 at
http://www.neulevel.biz/faqs/biztld_faqs.html.
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.
DECISION
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
Panelist
Dated: June 6, 2002
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