START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Yokogawa Electric Corporation v. Geoffrey Dean

Claim Number: FA0204000110839

 

PARTIES

Complainant is Yokogawa Electric Corporation, Musashino-shi, JAPAN (“Complainant”) represented by Masakatsu Noguchi.  Respondent is Geoffrey Dean, Alresford, UNITED KINGDOM (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stardom.biz>, registered with Domain Bank, Inc.

 

PANEL

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.

 

Louis E. Condon, Panelist.

 

PROCEDURAL HISTORY

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 25, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.

 

On May 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 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 30, 2002.

 

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Louis E. Condon  as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

            “Domain name “stardom.biz” owned by G. Dean is identical to Complainant’s

            Registrations “stardom” DE 30115194 AU 867960 and US Serial Number

            76226012 in spelling and pronouncing.

 

            G. Dean is selling many domain names for the purpose of obtaining a complaint is

                        using profits from selling domain names. Not using in the field of actual

                        trade.

           

            I guess that the URL address below was opened by Mr.G. Dean

            The reason why is that he is using his name on the top page of the URL.

            If the Web page is further developed, it shows “stardom.biz”

            It is very clear for us that his purpose is to sell “stardom.biz” to someone to need           

            its name at high price.

            In view of business moral his purpose is very unfair to the general public.”

           

                        (see URL http/www.geoffreydean.co.uk)

                        (Appending data; geoffreydean_entry.bmp,geoffreydean_stardom.bmp)

 

B. Respondent

 

“ My use of Stardom.biz is in it’s generic sense, (to achieve “stardom”) and not for use as a trademark. My Multi Level Marketing business ( the products and services of which do not conflict with those offered by the Complainants Trademark) reward people with achievement levels. Our distributors aspire to become “stars”, their goal being to reach “stardom”.

My use of stardom.biz is to enable participants of a sale programme to see their position on achievement recognition tables which acknowledge the volume of sales attributed to each “star”

The URL address: www.geoffreydean.co.uk is my EMAIL address holding page, supplied by Easyspace.com (my ISP). ALL persons that purchase a domain name through Easyspace.com are given a holding page, it is NOT used as a website by me. The information on that page is owned by Easyspace.com and I have no control over it at all. Any domain name sales generated by the page are transacted through Easyspace.com not me. The information supplied by the Complainant Appending data: geoffreydean_entry.bmp,geoffreydean_stardom.bmp was supplied to them by Easyspace.com. If they tried to purchase the domain

Stardom.biz they would have been told that the domain was not available, (the

Domain was and still is on IP hold). I have no intention of selling or transferring

Stardom.biz.

 

My use of stardom.biz is to enable participants of a sales programme to see their position on achievement recognition tables, which acknowledge the volume of sales attributed to each “star”’

 

FINDINGS

I find that the Complainant has registered the subject trademark in Germany and Australia, and the registration is pending in the United States. The Respondent does not contest the claimed registration but states his use of the name will be in a generic sense for recognition of employees’ performance. Respondent makes no other claim to a right to use the mark. I further find that the name is being offered for sale as alleged by the Complainant.

 

DISCUSSION

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’s Rights in the Mark

 

            By virtue of its registration in three countries, the Complainant established its right to the trademark which is identical to the domain name claimed by the Respondent. This fact is not contested; rather, the Respondent’s response was that he planned to use the name in a generic sense.                                         

               

Respondent’s Rights or Legitimate Interests

 

            The Respondent did not attempt to prove that it is the owner or beneficiary of a trade or service mark that is identical to the domain name; nor did he claim use of or preparations to use the domain name in connection with a bona fide offering of goods or services; nor that he has been commonly known by the domain name. Because of the intended commercial nature of websites hosted at “.biz” domain names, STOP Policy Section 4( c) does not contemplate that a Respondent may demonstrate its rights/interests through legitimate or noncommercial fair use as the corresponding paragraph in the UDRP    does. Even when a Respondent represents that it intends to use a domain name for a commercial purpose, its use under STOP Policy Section 4( c)( ii) must be for a bona fide offering of goods or services.  For these reasons one must conclude that the Respondent has no rights or legitimate interest in the domain name

 

Registration or Use in Bad Faith

 

           Evidence that 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 the Respondent’s out-of-pocket costs directly related to the domain name will satisfy the bad faith requirement of STOP Policy Section 4( b)(i). Some UDRP Panels have held that even general offers to sell, without a specific named price, will satisfy the bad faith element of the UDRP. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., F 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

           STOP claims differ from UDRP claims in one very significant and fundamental way. Unlike the UDRP, under STOP when a registrant (Respondent) registers a domain name for which an IP Claim was previously filed, the registrant is notified of  the  potential for trademark infringement before being allowed  to proceed with the registration. One Panel has held that registration of a domain name despite such notice, in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name.” See Gene Logic Inc. Bock, FA 103042 (Nat. Arb. Forum Mar.4, 2002). This appears to the Panel to be one of those occasions where the circumstances are appropriate and, therefore, I find that the Respondent’s registration was in bad faith.    

 

DECISION

      The Complainant having met the requirements of Paragraph 4(a) of the STOP Policy and the Panel having found the registration to be in bad faith, the domain name <stardom.biz> shall be TRANSFERRED to the Complainant, and subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

 

 

 

 

Louis E. Condon, Panelist
Dated: July 3, 2002