START-UP TRADEMARK OPPOSITION POLICY
Hachette Filipacchi Presse v. Corporate Services
Claim Number: FA0204000109739
Complainant is Hachette Filipacchi Presse, Levallois Perret, FRANCE (“Complainant”). Respondent is Corporate Services, Miami, FL, USA (“Respondent”) represented by Paul D. McGrady, of Ladas & Parry.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scoop.biz>, registered with Registration Technologies, 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.
Judge Richard B. Wickersham, (Ret.) 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 18, 2002; the Forum received a hard copy of the Complaint on April 23, 2002.
On April 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 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 Start-up Trademark Opposition Policy (the “STOP Rules”).
On May 13, 2002, pursuant to Respondent’s request, Respondent was granted an extension for filing its Response, making the new Response deadline June 3, 2002.
A timely Response was received and determined to be complete on May 30, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
“It shall be recognized that the domain name SCOOP.BIZ is strictly identical to the Trademarks SCOOP of HACHETTE FILIPACCHI PRESSE and causes with these Trademarks an obvious likelihood of confusion.
The disputed domain name SCOOP.BIZ incorporates the Complainant’s well-known trademark in its entirety and causes confusion that there may be an association between the Respondent’s domain and the Complainant. See Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).
Further, the addition of a generic code top-level domain (i.e., “.biz”) is irrelevant for purposes of determining the identical nature or confusing similarity between Complainant’s trademark SCOOP and SCOOP.BIZ. The addition of the generic code top level domain designation .biz does not serve to distinguish those names from Complainant’s marks since .biz is a common Internet address identifier that is not specifically associated with Respondent.”
[b] Respondent has no rights or legitimate Interests on the domain name SCOOP.BIZ
“Respondent has registered the domain name SCOOP.BIZ on March 27, 2002, namely after the filing and the registration of the Trademarks SCOOP.
Moreover, Respondent has never begun to use its domain name SCOOP.BIZ in commerce, and Respondent has never been known by the public under the denomination SCOOP or SCOOP.BIZ.
The mere registration of SCOOP.BIZ as domain name is not sufficient to establish Trademark or Service Mark rights on the denomination SCOOP.BIZ.
“To establish Tradmark rights in a domain name it takes more than mere registration”. (See Millennium Broadcasting Corporation v. Publications France Monde, AF-9985752 / Sampatti.com Ltd v. Chetan Rana, AF-0249 / Powarchute Inc. v. Buckeye Industries, AF-0076).
It has to be concluded that the denomination SCOOP and the domain name SCOOP.BIZ are not seriously used by Respondents who have no Trademark Rights on the denomination SCOOP and no legitimate interest for registering SCOOP.BIZ.”
[c.] Respondent reserved the domain name SCOOP.BIZ in bad faith:
“Since the Complainant’s well-known Trademarks and SCOOP are intensively used in Europe, respondent which is allegedly located in Europe could not ignore at the date of the registration of the domain name SCOOP.BIZ, the Complainant’s Trademark Rights on the denomination SCOOP.”
This “registration disturbs HACHETTE FILIPACCHI PRESSE’S business, creating with its well-known Trademark SCOOP an obvious confusion for the public.”
“The SCOOP.BIZ domain name is identical to Complainant’s SCOOP.BIZ trademark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”);”
“Respondent has “passively held” the domain name SCOOP.BIZ and this fact is proper to establish Respondent’s bad faith: See Bloomberg L.P. v. Xuebao Wang, (NAF Claim Number: FA0012000096305) - See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); See also Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) finding bad faith where Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose.”
“Respondent, “Corporate Services” is a division of Signature Domains, an ICANN-approved registrar of generic top-level domains. Signature Domains was instructed to file a domain name application for SCOOP.BIZ in order to ensure Monsanto Company’s opportunity to reflect Monsanto Company’s valuable SCOOP trademark within this new domain space.
Although the domain was awarded to Monsanto Company, the registry details appear in the name of Corporate Services. Signature Domains plans to correct this title defect as soon as this matter is resolved and the registry lock is lifted.”
“‘Corporate Services,’ Signature Domains and Monsanto Company are all referred to collectively herein as “Respondent” as Corporate Services/Signature Domains is the agent of Monsanto Company for purposes of filing the domain name application for SCOOP.BIZ and holding the same until this matter is resolved and the registry lock is lifted.
The Respondent should be considered as having rights or legitimate interests in respect of the domain name that is the subject of the complaint. STOP Rule 3(c)(ix)(2); STOP Policy ¶ 4(a)(ii).
Monsanto Company is the owner of Egyptian Trademark Registration No. 70306 for the mark SCOOP covering “pharmaceuticals, veterinary and sanitary substances; plasters, material for bandaging; material for stopping teeth; dental wax; disinfectants; preparations for killing weeds and destroying vermin” in international class 5.”
“By emails of May 6, 2002; May 10, 2002; May 13, 2002; and May 14, 2002, Monsanto Company informed Complainant of its legitimate rights and its registered SCOOP trademark, provided a copy of the relevant trademark registration certificate and, under the circumstances, invited Complainant to withdraw its Complaint.”
“Finally, by email of May 15, 2002, Complainant’s attorneys responded and indicated that, while Complainant was “not concerned” with the title issue related to SCOOP.BIZ, i.e., the domain being held by Corporate Services for the benefit of Monsanto Company, Complainant intends to maintain its Complaint since it believes it is “more entitled” to own SCOOP.BIZ since its client uses its trademark “SCOOP” for communication services and Monsanto Company owns and uses its trademark SCOOP for goods, which in Complainant’s opinion are not easily sold via the Internet.”
“Respondent has registered the domain name primarily for the purpose of using the domain to reflect its own trademark and to promote its own goods and services via the Internet. Respondent has no intention to sell, rent, or otherwise transfer the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name or under any conditions;”
“Respondent has registered the domain name in order to reflect its own registered mark, not to prevent the Complainant from reflecting its mark in a corresponding domain name. Although Complainant asserts in its Complaint that Corporate Services is “located in Europe,” Corporate Services is located in Miami, Florida and Monsanto Company’s principal place of business is St. Louis, Missouri, neither of which is Europe. Neither Corporate Services nor Monsanto Company knew of Complainant’s SCOOP mark, nor would they have any reason to know of Complainant’s SCOOP mark, apparently used limitedly in France alone, nor would such knowledge have impeded Monsanto Company’s attempt to register SCOOP.BIZ due to its own legitimate rights to the SCOOP trademark;” and,
“Respondent has registered the domain name primarily for the purpose of use in its own business, not for the purpose of disrupting the business of any other party. Complainant, who is not a competitor of Monsanto Company, can make no legitimate claims to the contrary;”
“Further, it would be very unlikely that the average consumer would think Complainant “sponsors” Monsanto Company as Monsanto Company is a multinational agricultural giant known throughout the world and is unlikely to be confused with Complainant as the two are not competitors.”
“Respondent requests that the Panel adopt a similar position as that which can be found in numerous panel decisions under the UDRP, namely that in cases of competing legitimate rights that the relief be denied. See Telaxis Communications Corp. v. William E. Minkle, Case No. D2000-0005; and Meredith Corp. v. CityHome, Inc., Case No. D2000-0223.”
DISCUSSION AND FINDINGS
A. The evidence presented by the parties demonstrates that Complainant’s Trademark Registration SCOOP is identical to the domain name <SCOOP.BIZ>. STOP Rule 3(c)(ix).
B. The evidence presented by the parties demonstrates that Respondent did have rights or legitimate interests in respect of the domain name. The domain was awarded to Monsanto Company and Corporate Services/Signature Domains is the agent of Monsanto Company for purposes of filing the domain name application for <SCOOP.BIZ>. STOP Rule 3(c)(ix)(2); STOP Policy §4(a)(ii). Monsanto Company owns Egyptian Registration mark SCOOP, No. 70306.
C. The evidence presented by the parties demonstrates that the registration of Respondent’s domain name <SCOOP.BIZ> was in good faith.
In order to obtain an order that a domain name be transferred, the Complainant must prove:
i. The domain name is identical to a trademark or service mark in which the Complainant has rights; and,
ii. The Respondent has no rights or legitimate interests in respect of the domain name; and,
iii. The domain name has been registered or is being used in bad faith. STOP Policy §4(a).
We find that both Complainant and Respondent have rights or legitimate interests in the disputed domain name. Hence, the Complaint is hereby DISMISSED. Further, subsequent challenges to this domain name, as against the Respondent, under the STOP Policy SHALL NOT be permitted against this domain name.
JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist
Dated: July 8, 2002
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