Gehl Company v. Kaffer Enterprises
Claim Number: FA0204000110776
Complainant is Gehl Company, West Bend, WI (“Complainant”) represented by Michael Mulcahy. Respondent is Kaffer Enterprises, San Diego, CA (“Respondent”).
The domain name at issue is <mustang.biz>, registered with Intercosmos Media Group, 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.
Daniel B. Banks, Jr., 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 23, 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 June 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Daniel B. Banks, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is the parent company of Mustang Manufacturing Co., Inc. It has used the MUSTANG mark in commerce in relation of its front-end loaders for materials since 1966. Complainant owns registered trademarks for "MUSTANG" in the United States and twelve other countries. Attached to the Complaint are documents evidencing the trademark registrations of Complainant.
Complainant contends that the disputed domain name <mustang.biz> is identical to the MUSTANG trademarks that are listed in the Complaint. Complainant also contends that the Respondent does not own a trademark incorporating the domain name, has no business interests associated with the domain name, nor is it commonly known by the domain name.
Complainant alleges that the domain name should be considered as having been registered or used in bad faith in that Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.
Complainant's mark, "MUSTANG", is a common word found in various dictionaries and is not exclusive or unique to Complainant. Complainant does not own <mustang.com>, <mustang.net>, <mustang.org>, <mustang.info> or <mustang.us>. Those domain names are registered by other entities. The use of the domain name mustang.biz is unlikely to cause confusion with Complainant's mark.
Respondent has been involved in the offering of parts and goods for or relating to Ford Mustang vehicles since 1996. Restoring, collecting, purchasing, trading and selling Ford Mustang vehicles, parts and related goods has been a hobby of the Respondent's family for many years. The disputed domain name was registered for the purposes of conducting legitimate business online in relation to Ford Mustang.
Respondent made a legitimate and good faith attempt to create a Limited Liability Company in the State of California for the purpose of conducting e-commerce in preparation for the completion of the web site <mustang.biz>. Before the Complaint was filed, an accounting advisor, Mary Lou Lamanna, was consulted on numerous occasions regarding the forthcoming <mustang.biz> web site and the status of Kaffer Enterprises.
The disputed domain name was registered for the purposes outlined above and no company, including Complainant or a competitor of Complainant, has been contacted with an offer to sell the domain name. Respondent's business will not be in direct or indirect competition with Complainant nor will the content be likely to cause confusion with Complainant.
1 - The domain name is identical to Complainant's registered trademark "MUSTANG".
2 - The Respondent has rights or legitimate interests in respect of the domain name.
3 - The domain name was not registered or being used in bad faith.
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 rights and legitimate interests in the mark "MUSTANG". This is demonstrated by the numerous trademark registrations listed in the Complaint and attachments.
A Respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use or demonstrable preparations to use the domain for a bona fide offering of goods or services. STOP Policy 4(c)(ii). Respondent has demonstrated rights or legitimate interests in the disputed domain in that prior to any notice to the Respondent of the dispute, Respondent had made demonstrable preparations to use the domain name for a bona fide offering of goods or services. This is evidenced by Respondents activity, since 1996, in restoring, collecting, purchasing, trading and selling Ford Mustang vehicles, parts and goods relating to vehicles produced by Ford Motor Company under the model name MUSTANG and by Respondent's attempt to incorporate in California. Also, Respondent conferred with an accounting advisor on numerous occasions prior to this dispute.
Under STOP Policy ¶¶ 4(b)(i),(ii),(iii), and (iv), there are four examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy 4(a)(iii). Those are (1) the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name to Complainant or its competitor for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name; (2) by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering a domain name that reflect its mark; (3) by showing that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; and (4) that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, there is absolutely no evidence to support a finding that any of the above circumstances exist. The only evidence offered by Complainant are attachments reflecting registrations of the trademark "MUSTANG". Respondent has offered evidence as to its legitimate interest in the Mustang model vehicle of Ford Motor Company and its offering of products and services related to that vehicle prior to notice of this dispute. Additionally, Complainant is not the owner of any of the other gTLD variations of this be domain name. In fact, all other gTLD domain names are registered to other entities than the Complainant.
Having concluded that the Respondent has legitimate rights and interests in the disputed domain name and that Respondent did not register or use the disputed domain name in bad faith, it is determined that this Complaint is dismissed and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Honorable Daniel B. Banks, Jr., (Ret.),
Dated: July 1, 2002
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