Claim Number: FA0204000110772
Complainant is The Historical Research Center International Inc., Boynton Beach, FL, USA (“Complainant”) represented by Michelle Koiles, Esquire. Respondent is artrampage.com (John Cui), Richmond, CA, USA (“Respondent”), pro se.
The domain name at issue is <names.biz>, registered with R&K Global Business Services, 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.
M. KELLY TILLERY, ESQUIRE, 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 22, 2002; the Forum received a hard copy of the Complaint on April 23, 2002.
On April 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May16, 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 15, 2002.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE, as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant contends that NAMES.COM is a common law, unregistered trademark. Complainant has utilized same in connection with historical research services regarding family name, history, coats of arms, first name history and heraldic products. Complainant contends that it has used the domain name extensively as its trademark on its website that promotes products and business opportunities and that people identify its business by the NAMES.COM trademark.
Complainant contends that Respondent should not be considered as having any rights or legitimate interests in respect to the domain name since Complainant has extensively and internationally promoted its business, products and business opportunities with the domain name on all of its sales materials.
Complainant contends that the domain name should be considered as having been registered or used in bad faith because Complainant e-mails dealers, prospective new dealers and retail customers referring them to the domain name and that it uses the domain name in its business opportunity sales literature sent out to prospective new dealers.
Complainant contends that if Respondent were to possess rights to the domain name it would disrupt Complainant’s business by creating confusion with Respondent’s website.
Complainant has submitted as Exhibits three (3) samples of sales documentation used to send to prospective new dealers, utilizing the NAMES.COM trademark.
Respondent contends that “names” is non-exclusive in nature, that it is descriptive and/or generic and should be considered as a least protectable and effective trademark. Respondent points out that WHOIS records show that “names” has been registered in <.net>, <.org>, <.us>, <.info>, <.cc>, <.ws> and at least twenty-five (25) other various TLDs worldwide.
Respondent contends that “names” is exceedingly common and that when entered into the Google Search Engine, the return result has about 21 million responses.
Respondent contends that Complainant has no registration or even application pending with the U.S. Patent and Trademark Office.
Respondent contends that prior to its request for the <names.biz> domain name, it had no knowledge of the existence of NAMES.COM or its service or offerings and that NAMES.COM only came to its attention through the e-mail Complaint in this action.
Respondent contends that it requested <names.biz> solely to build an identity development website being essential for Art Rampage Design which is a graphic design and identity development company established online at <rampageart.com> since 1999. Respondent contends that it provides a range of services which include 3-D modeling and animation, vector graphics, bit map graphics, traditional graphics, clip art, flash animation, game interface design, magazine cover design, advertising design, banner design, business card design, corporate identity design, web design and web hosting.
Respondent contends that Complainant has presented no evidence that Respondent intended to or will sell or rent the domain name or that the domain name was registered in order to prevent Complainant from reflecting the trademark in a corresponding domain name, or that Respondent is a current or future competitor with intent to disrupt the Complainant’s business, or that Respondent attempted to create a likelihood of confusion in order to profit from its mark, services and/or website location.
Complainant has failed to meets its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name is identical to a trademark or service mark in which Complainant has rights.
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 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 Complainant has rights; and
(2) 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 failed to establish that it has “rights” in the mark NAMES.COM. Complainant has presented some undated marketing material which indicates some use of NAMES.COM. It has not produced any Trademark Registration nor any Application therefore. While registration of the mark is not a pre-requisite, Complainant must establish use of the mark prior to the date of the registration of the domain name in question. This Arbitrator finds it difficult, based upon the very limited evidence submitted, to find that Complainant has any “rights” in and to the mark NAMES.COM.
More importantly, however, the claimed “mark” is generic and therefore no one has or can have exclusive rights in and to same. See Energy Source, Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum, Feb. 19, 2001); ABC Inc. v. Genious, Inc., FA 104582 (Nat. Arb. Forum Apr. 12, 2002); See generally R. Badgley, Domain Name Disputes Section 2.04 [A] (Aspen Law & Business 2002); Gilson, Trademark Law & Practice, Section 2.02 (Matthew Bender 2000). Even if this domain name could be considered merely descriptive, Complainant has failed to demonstrate that the term has acquired secondary meaning. See ABC Inc. v. Genious, Inc. FA 104582 (Nat. Arb. Forum Apr. 12, 2002); Cyber Imprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001).
Because Complainant has failed to prove that it has rights in the claimed mark as required by STOP Policy 4(a)(i), it unnecessary to consider whether Complainant has proven the additional required elements of the STOP Policy.
Complainant’s Complaint is hereby dismissed. Respondent shall retain the domain name <names.biz>. No further IP claims are pending under the STOP Policy against this domain name.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: June 20, 2002
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