NPES v. Ross LeBel
Claim Number: FA0204000110761
PARTIES
Complainant
is NPES, Reston, VA (“Complainant”)
represented by Lilly Y Kinney. Respondent is Ross LeBel, Blaine, WA (“Respondent”) represented by Stephen L. Anderson, of Anderson & Shippey.
The
domain name at issue is <print.biz>,
registered with GAL Communications.
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.
Alan
L. Limbury 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 19, 2002; the Forum
received a hard copy of the Complaint on April 23, 2002.
On
April 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 13,
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 13, 2002.
On 17 June 2002, pursuant to STOP Rule 6(b), the Forum
appointed Alan L. Limbury Esq.
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
has used the trademark PRINT since 1966. U.S. Federal registration for that
mark (No. 1,430,500) was obtained in 1987 in the name of National Printing
Equipment and Supply Association, Inc. in respect of “organizing and conducting
trade shows for exhibitions of machinery, equipment and supplies used in the
graphic arts industry”, in International class 35 (U.S. class 101).
The
PRINT trade show event has been held in 1968, 1974, 1980, 1985, 1991, 1997 and
2001, with the next events scheduled for 2005 and 2009. The PRINT mark is in
perpetual use in connection with these events.
The disputed domain name is identical to the registered
trademark PRINT. Galcomm has
no rights or legitimate interest in the disputed domain name. Its primary
business is the registration and sale of domain names. The disputed domain name
was registered or is being used in bad faith because the registry [sic] of <print.biz>
by Galcomm is for the sole purpose of resale to the public. Sale to anyone
other than Complainant could cause confusion when used in conjunction with
other events. Use by Complainant’s competitors in conjunction with competitive
events within the industry would cause both confusion and disruption and loss
of revenue to Complainant and damage to its reputation as the mark holder.
B.
Respondent
Respondent
is Mr. Ross Lebel as registrant of the disputed domain name, not Galcomm, the
registrar. Complainant’s assertions concerning Galcomm are irrelevant.
Since
1996, Respondent has carried on business under the name CyberVision Network
providing various services as an Internet Service Provider, including domain
name registrations. He registered the disputed domain name with the intent of
expanding his business to include selling print-outs of websites owned by third
parties, selling photographic quality prints of photographs and graphic
materials residing on, or otherwise captured on CD-ROM format from websites of
third parties, and/or creating and selling boxes, POP displays, print ads,
print brochures, banners, fliers and the like to his clients. He did so without Complainant in mind, as
the generic word PRINT is apt to describe Respondent’s print and printing
services.
Complainant
lacks any exclusive rights to the purported mark PRINT, since it is generic and
descriptive, with substantial third party use.
Respondent
has a legitimate interest in the disputed domain name and Complainant has
failed to show that it was registered in bad faith.
This
is a case of Reverse Domain Name Hijacking.
Complainant has failed to establish all
the elements necessary to entitle it to the relief sought.
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
has established that the Mark PRINT is registered in the U.S.A. It is not clear that the registrant of the
mark (National Printing Equipment and Supply Association, Inc.) is the same
entity as NPES, Complainant. The Panel
is prepared to assume they are one and the same.
The
Panel finds that the disputed domain name is identical to the mark PRINT.
Complainant has established this element.
The onus of proving absence of rights or legitimate
interest in a disputed domain name is on the Complainant. Complainant makes no
claims against Respondent in this regard, merely claims against the registrar
that are irrelevant.
As an ordinary English noun and verb in common use,
PRINT has a variety of descriptive meanings and cannot belong exclusively to
anyone. Despite its registration as a trademark for a limited field of use, the
mark is inherently weak. In the case of generic marks and domain names, “in
particular where they comprise no more than a single, short, common word, the
rights/interests inquiry is more likely to favor the domain name owner”: Shirmax
Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution).
Because the word PRINT is
generic, the Panel finds that Respondent has rights and a legitimate interest
in the disputed domain by virtue of having been the first to register it: FreedomCard, Inc. v. Kim, D2001-1320 (WIPO) and the cases
there cited.
Complainant has failed to establish this element.
Complainant
makes no allegations of bad faith against Respondent, only irrelevant
assertions against the registrar.
Complainant
has failed to establish this element.
STOP
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith
to attempt to deprive a registered domain-name holder of a domain name.” To prevail on such a claim, Respondent must
show either that Complainant knew of Respondent’s unassailable right or
legitimate interest in the disputed domain name or the clear lack of bad faith
registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty.
Ltd., D2000-1224 (WIPO) and Goldline
International, Inc. v. Gold Line, D2000-1151 (WIPO) or that the Complaint was brought in knowing
disregard of the likelihood that
the respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO).
The
Panel considers this Complaint to have been badly misconceived but not to have
been brought in bad faith. Accordingly it is not appropriate to make a finding
of Reverse Domain Name Hijacking.
DECISION
The Complaint is dismissed.
Pursuant to STOP Rule 15(e)(ii), the Panel decides that no subsequent
challenges under the STOP against the domain name <print.biz>
shall be permitted.
Alan L.Limbury
Esq., Panelist
Dated: 25 June 2002
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