Buckeye International, Inc. v. Magnetic
Planet Media
Claim Number: FA0204000110846
PARTIES
Complainant
is Buckeye International Inc.,
Maryland Heights, MO (“Complainant”).
Respondent is Magnetic Planet Media,
Gambier, OH (“Respondent”).
The
domain name at issue is <buckeye.biz>,
registered with Dotster, 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.
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 25, 2002; the Forum
received a hard copy of the Complaint on April 30, 2002.
On
May 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
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 22, 2002.
Complainant’s
Additional Submission was received and determined by the Forum to be complete
on May 24, 2002.
On June 24, 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 United States and Canadian registrations in International Class 3 for the
trademark BUCKEYE as a word mark and as a design mark. It and its predecessors
have used the BUCKEYE mark in connection with various cleaning products since
1905. The disputed domain name is
identical to Complainant’s BUCKEYE trademark. Respondent has no rights or
legitimate interests in the disputed domain name, which was registered in bad
faith. In a telephone conversation shortly after registration, Respondent
indicated a willingness to sell the disputed domain name to Complainant for
$7,000.
B.
Respondent
Respondent
admits the disputed domain name is identical to Complainant’s U.S. and Canadian
registered trademarks but denies that the limited protection afforded to a
trademark in the chemical cleaning area entitles Complainant to the disputed
domain name. Although notified of Complainant’s IP Claim, Respondent proceeded
with its application to register the disputed domain name because it had a
legitimate interest in securing that domain name for potential business
development.
The
word “buckeye” is in generic and widespread use. A Yellow Pages search reveals
nearly 2500 companies using that word in association with their business or
trade name in Ohio alone. There are over 100 U.S. trademark registrations. In
1936 the name Buckeye was found to have lost any distinctiveness it may once
have had: Burger Brewing Co. v. Maloney-Davidson Co., 86 F.2d 815 (6th
Cir. 1936).
This
is one of those rare cases in which the domain, <buckeye.biz>, is
desirable in its own right and without respect to any intellectual property
rights attendant to the name. Accordingly, the foreseeable Internet traffic
associated with the name derives from common and widespread use and acceptance
of the generic term. In such cases,
successful registration creates a genuine and legitimate business opportunity
with numerous avenues of potential business development. It is this prospect that led Respondent to
seek to acquire the name.
Respondent
registered the disputed domain name in good faith. The telephone conversation
has been misinterpreted.
C.
Additional Submissions
For
the reasons set out in Pivotal Corp. v. Pivot Servs. Ltd. f/k/a Graeme
Clemett & Assocs. Ltd. FA 112602 (Nat. Arb. Forum), citing Am.
Online, Inc. v. Miles d/b/a AD2000D.com, this Panel finds Forum
Supplemental STOP Rule 7 is inconsistent with the STOP, that it goes beyond
what has been mandated and defined in the STOP, and that no Provider can
encroach upon the broad discretion given to the Panel by the STOP and the STOP
Rules. Nevertheless, under STOP Rule 10(b), the Panel will have regard to
Complainant’s additional submission as if the Panel had requested it under STOP
Rule 12.
It
is not necessary for a Complainant to establish exclusive rights, merely that
it has rights in a trademark to which the domain name is identical. Burger
Brewing involved two users of the mark BUCKEYE, who were allowed concurrent
use because the Court held no likelihood of confusion.
Respondent
has not established a legitimate interest in the disputed domain name. Mere
assertions of ideas for future uses are not “demonstrable plans”. Respondent
admits having no concrete business plan before being notified by Complainant of
this dispute.
The
only reasonable inference from Respondent’s admitted telephone conversation is
that Respondent was making an offer to sell for more than $7,000.
Complainant has not established the
elements necessary to entitle it to relief.
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, properly
brought, 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 whether a disputed domain name is identical to the mark
in which the Complainant asserts rights.
It is common ground that Complainant has rights in the
mark BUCKEYE and that the disputed domain name is identical to that mark. Complainant has established this element of
its case.
Since
Complainant bears the onus of proof of
absence of rights or legitimate interest in the disputed domain name on the
part of Respondent, Complainant must make a prima facie showing of such
absence before the evidentiary burden shifts to Respondent to show by concrete
evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web.
D2000-0624 (WIPO) and the cases there cited.
Complainant is correct that, on the issue
of identity, it is not necessary for a Complainant to establish exclusive
rights, merely that it has rights in a trademark to which the domain name is
identical. However, on the issue of legitimacy, lack of exclusivity is a
relevant consideration, particularly in cases where the mark is in widespread
third party use.
Several domain cases have decided that
where the domain name and trademark in question are generic—and in particular
where they comprise no more than a single, short, common term—the
rights/interests inquiry is more likely to favor the domain name owner: Shirmax Retail Ltd. v. CES Marketing,
Inc., AF-0104
(e-Resolution). See also General Machine
Prods Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum); Car Toys, Inc. v. Informa Unlimited, Inc.,
FA 93682 (Nat. Arb. Forum); CRS Tech. Corp. v. Condenet, Inc.,
FA 93547 (Nat. Arb. Forum); Perricone
v. Hirst, FA
95104 (Nat. Arb.
Forum); Zero Int’l Holding GmbH v. Beyonet Servs.,
D2000-0161 (WIPO); Primedia Special Interest Pubs., Inc. v. Treadway, D2000-0752 (WIPO) and First Am. Funds, Inc. v. Ult.Search,
Inc., D2000-1840 (WIPO).
Other domain cases have decided that
where the trademark is merely a common generic word in which the Complainant
cannot have exclusive rights, the Respondent has rights and a legitimate
interest in the domain by virtue of having been the first to register it: Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb.
Forum); Ultrafem, Inc.
v. Royal, FA 97682
(Nat. Arb. Forum); Cream Holdings Ltd. v. Nat’l Internet Source,
Inc. D2001-0964 (WIPO).
It is not the role of the Panel to
conduct an independent investigation outside the materials submitted in the
record or materials of which judicial notice may be taken: Benefitslink.com
v. Haynes FA 95164 (Nat. Arb. Forum); Jazid, Inc. v. Steinar, AF-0807
(eResolution). However, where a party to the proceedings makes reference in the
materials it places before the Panel to third party websites, the Panel may
visit them without violating this principle, always bearing in mind that
caution is required because site content changes.
A search by the Panel at the
<superpages.com> website
mentioned by Respondent for the word “buckeye” in Ohio and elsewhere revealed
that the word “Buckeye” is in common use in relation to a wide variety of
businesses, associations and societies particularly in, but not limited to,
Ohio. The Panel concludes that, despite Complainant’s undisputed rights in its
registered trademarks in the field of cleaning materials, Complainant does not
have exclusive rights in the mark BUCKEYE, which is not strong enough to
prevent others from establishing for themselves goodwill in the same mark in
other fields: Goldline Int’l, Inc.
v. Gold Line, D2000-1151
(WIPO).
The Panel finds that Complainant has failed to make
a prima facie showing of absence of rights or legitimate interests on
the part of the Respondent. It
is therefore irrelevant that Complainant has not authorized Respondent to use
its trademark nor to register the disputed domain name; that the name of
Respondent is not and does not include any part of the disputed domain name and that Respondent made no plans to use the
disputed domain name until after having been notified of this dispute by
Complainant. See Rusconi
Editore S.p.A. v. FreeView Publishing Inc., D2001-0875 (WIPO).
The Complainant has failed to establish this element
of its case.
Having regard to the Panel’s decision on
the issue of legitimacy, it is unnecessary for the Panel to determine this
issue.
DECISION
Pursuant
to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds
that this dispute is not within the scope of paragraph 4(a) of the STOP and
accordingly the Complaint is dismissed.
Pursuant to STOP Rule 15(e)(ii), the Panel decides that subsequent
challenges under the STOP against the domain name <buckeye.biz> shall
not be permitted.
Alan L. Limbury, Esq. Panelist
Dated: July 2, 2002
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