main v. Morris Communications
Claim Number: FA0204000110806
Complainant is main, Kirkland, WA (“Complainant”) represented by Roger Lowe. Respondent is Morris Communications, Augusta, GA (“Respondent”) represented by Timothy E Moses.
The domain name at issue is <main.biz>, registered with EMarkMonitor, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”). Complaint as Complainant 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 24, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 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 June 5, 2002.
Complainant’s Additional Submission was received after the deadline established for submissions. Therefore, the Forum does not consider Complainant’s Additional Submission to be in compliance with STOP Supp. Rule 7. Respondent’s Additional Submission was also received after the deadline established for submissions. The Forum finds Respondent’s Additional Submission to be in violation of STOP Supp. Rule 7.
On July 16, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single Panelist.
Due to exceptional circumstances, the Panel was granted an extension until August 17, 2002 with which to render its decision.
Complainant seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
Complainant urges that Respondent registered a domain name, <main.biz>, that is identical to Complainant’s “main” trade name. Complainant urges that Respondent has no legitimate interest in the trade name or domain name. Complainant further urges that Respondent acted in bad faith.
B. Respondent makes the following points in response:
Respondent urges that Complainant has no standing to bring a STOP Complaint because Complainant seeks to protect a trade name filed pursuant to the laws of Washington State rather than to protect a registered trademark. Respondent concedes that Respondent has no such mark in any state but asserts that it has rights at least equal to Complainant and that the mark is generic. Respondent states that Respondent did not act in bad faith but concedes that it has made no use of the domain name in issue.
C. Additional Submissions
Complainant and Respondent’s Additional Submissions were untimely and not considered pursuant to Forum Rules.
Complainant owns the “main” trade name by virtue of registration as a sole proprietorship in Washington State. Complainant has used the trade name since 1998 but registered the name December 7, 2000. The trade names “main,” “main.net,” “main.biz,” and “main.info” were registered at that time.
Respondent registered the disputed domain name, <main.biz> on March 27, 2002.
Respondent, from Georgia, has not registered “main” in that state or any other and has not registered a similar name. Respondent is not known by the trade name “main” and none of Respondent’s existing businesses have a relationship to the name “main.”
The record is not clear as to whether or not Respondent knew or should have known of Complainant’s use of the “main” trade name at the time Respondent registered the domain name in issue <main.biz>. The disputed domain name is identical to Complainant’s “main” and “main.biz” trade names.
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.
A Complainant may establish rights in its mark at common law. See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark). Complainant established that it has rights in the “main” trade name through registration in Washington State and through Complainant’s use of the “main” trade name in commerce.
The domain name registered by Respondent, <main.biz>, contains Complainant’s entire “main” trade name as well as Complainant’s “main.biz” tradename. Respondent’s domain name adds only the inconsequential “.biz” to Complainant’s “main” trade name. Therefore, Respondent’s domain name is identical to two different versions of Complainant’s trade name, “main,” and “main.biz.”
However, Respondent contends that Complainant has no standing because the trade name is generic. The Panel finds that “main” standing alone is a generic term and that in order to show an exclusive right to use the name, Complainant must produce sufficient evidence to show that “main” is so established in the mind of the public with goods, products or services that the term has acquired unique or secondary meaning independent of Complainant. Complainant did not make this showing and did not show that the trade name itself is sufficiently well known to have acquired national or international status. See computer.biz v. Manski, FA 114300 (Nat. Arb. Forum Aug. 1, 2002) (finding that “Complainant is using the word computer.biz generically to describe its computer business, and it has failed to demonstrate sufficiently strong identification of its mark to establish secondary meaning”); see also A.O. Smith Corp. v. Rheem Solar Centre, FA 114389 (Nat. Arb. Forum July 31, 2002) (finding that Complainant, a water heater manufacturer, did not have rights in HOTWATER even though it operated a website at <hotwater.com> for six years because it failed to provide evidence of secondary meaning); see also Exxon Mobil Corp. v. Marco Publ’g Corp., FA 112534 (Nat. Arb. Forum July 10, 2002) (denying Complainant’s claim because Complainant failed to provide either proof of registration of its alleged ENERGY mark or evidence of secondary meaning in the mark).
Cases brought pursuant to the UDRP or STOP Policy must show common law or legal trademark rights. The filing of a company name, standing alone, will not meet this burden. See Cyperimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without further evidence of common law trademark, the Complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
Complainant failed to show trademark rights at common law. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding Complainant failed to prove common law trademark rights because it did not prove CYBERIMPRINTS.COM was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning the Complainant must show that the public identifies the source of the product rather than the product itself).
The Rules do not make it impossible for a Complainant to prevail where the trademark or name is based on a generic term. See Biologische Heilmittel Heel GmbH v. Chuck Crews, FA 105902 (Nat. Arb. Forum May 9, 2002) (transferring <heel.com> to Complainant, which held a registered trademark in “-HEEL”). Here, however, Complainant has failed to show unique or secondary meaning attaching to its “main” trade name.
The Panel finds that Complainant has rights to and interests in the “main” and “main.biz” trade names but that “main” is a generic term and Complainant has not shown an exclusive right to use a generic term pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the “main” trade name and would thus have no rights in the <main.biz> domain name.
Under STOP Policy ¶ 4(c), the Respondent may demonstrate its rights or interests by proving:
i. Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Respondent may demonstrate its rights/interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). But a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Respondent urges that it had begun development and attached a copy of a web page showing a street sign bearing the <main.biz> name. This showing did not include proof of actual use of the name prior to the filing of a STOP Complaint. Respondent asserts that he intends to develop the <main.biz> site to encourage and guide those interested in restoring urban areas. But Respondent has not shown actual use and development that would support a claim of “use of, or demonstrable preparations to use” such as would satisfy STOP Policy ¶ 4(c)(ii). See Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent continuously operated a website at <americanway.com> for over five years in connection with the sale of its video series “The American Way of Training Hunters & Jumpers,” such activity satisfied the requirements of STOP Policy ¶ 4(c)(ii) in regard to the identical domain name <americanway.biz>).
Respondent moreover concedes that Respondent has no trademark or other interest in the “main” trade name, that it did not file a trademark application prior to the filing of this Complaint, and that it has not used the “main” trade name in commerce prior to filing the domain name in dispute.
But Respondent asserts that at the very least Respondent has the same rights that Complainant has in the “main” name. Respondent offered no proof that satisfies STOP Policy ¶ 4(c)(i) because Respondent denied having an interest other than one equal to Complainant. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess). Respondent’s position would have benefited from such proof under STOP Policy ¶ 4(c)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant).
The Panel knows Respondent as Morris Communications and no evidence suggests that Respondent is commonly known as “main” or <main.biz>.
However, where a trademark arises from a generic word as it does here; and secondary meaning has not been established, as the Complainant has failed to do here, the burden does not shift to Respondent to prove exclusive right or interest but remains with Complainant to establish that Respondent has no interests. See FreedomCard, Inc. v. Kim, D2001-1320 (WIPO Jan. 20, 2002) (“Were the trademark a well-known invented word having no descriptive character, these circumstances would shift the onus to Respondent to demonstrate its rights or legitimate interest in the disputed domain name... [b]ut the mark FREEDOM CARD is a common generic expression in which the Complainant cannot have exclusive rights”); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”) and Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“given the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark”)
The Panel finds, therefore, that Complainant has failed to show that Respondent has no rights in the disputed domain name. See London Special Risks Ltd. v. Wooho T&C d/b/a RGnames, FA 112505 (Nat. Arb. Forum July 31, 2002) (finding that, although Complainant held rights in the ANGEL mark and Respondent had not proven its rights in the <angel.biz> domain name, Complainant failed to affirmatively prove Respondent’s lack of rights in the domain name); see also New Cargo Furniture, Inc. v. BDG Mktg., FA 114606 (Nat. Arb. Forum July 31, 2002) (finding that the Respondent demonstrated rights or legitimate interests in the domain name <cargo.biz> by providing evidence of future website content to be hosted at the domain related to its transportation services business); see also Financial Aid.com LLC v. Schaffhausen, FA 109368 (Nat. Arb. Forum July 31, 2002) (finding that Respondent had rights in the domain name <financialaid.biz> where Complainant held a service mark in FINANCIALAID, because Respondent demonstrated preparation to use the domain name in relation to its service of providing financial aid information); see also HempWorld, Inc. v. Payne, FA 112513 (Nat. Arb. Forum July 9, 2002) (finding that Respondent demonstrated rights in <hemp.biz> by proving the existence of its company, “Canada Hemp Company”)
Accordingly, the Panel finds that Complainant has failed to show that Respondent has no rights and legitimate interests in the disputed domain name. The Panel declines to find that Respondent has such rights under STOP Policy ¶ 4(a)(ii) but finds that STOP Policy ¶ 4(a)(ii) has not been satisfied.
The submissions permit an inference that Respondent had actual notice of Complainant’s rights in the “main” trade name at the time Respondent registered the disputed domain name due to notice from the STOP registration procedure. Respondent’s registration of <main.biz>, despite knowledge of Complainant’s rights, may constitute bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).
Having determined that the Complaint should be dismissed, the Panel declines to make a finding of bad faith under STOP Policy ¶ 4(a)(iii) since Complainant failed to establish a right to exclusive use of the trade name contained within the disputed domain name.
Having failed to establish all three elements required under the STOP Policy, the Panel concludes that the requested relief cannot be granted and that the Complaint should be and it is hereby DISMISSED. Further challenges against this domain name SHALL be permitted under the STOP Policy.
Hon. Carolyn Marks
Dated: August 17, 2002
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