Foundation IT Pty Limited v. David Sprake
Claim Number: FA0204000110856
Complainant is Foundation IT Pty Limited, North Ryde, AUSTRALIA (“Complainant”) represented by Barry W Thompson. Respondent is David Sprake, Flintshire, UNITED KINGDOM (GREAT BRITAIN) (“Respondent”).
The domain name at issue is <fit.biz>, registered with Catalog.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 28, 2002.
On June 21, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The <fit.biz> domain name is identical to Complainant's FIT.BIZ mark. Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent contends that he registered <fit.biz> to expand his business of selling health and fitness products. He contends that the word “fit” is generic.
Upon filing this proceeding Complainant had applications for the following trademarks pending before the Australian Trade Marks Office:
“FIT” 884081 Class 42, Subscription based managed Information Technology Services; not being publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other network (including web sites)
“FIT.BIZ” 884086 Class 42, Subscription based managed Information Technology Services; not being publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other network (including web sites)
“FIT for your Business” 884085 Class 42, Subscription based managed Information Technology Services.
While this proceeding has been pending, the Australian Trade Marks Office has registered these trademarks.
These trademarks are the names and describers of a suite of products that Complainant sells to small businesses in Australia. The suite comprises of personal computers, printers, networks, applications and the on-line management of this equipment. Essentially, the customer is outsourcing information technology needs from Complainant.
Complainant intends to use <fit.biz>, as the second level domain name of the e-mail addresses of the subscribing customers. For example; email@example.com, firstname.lastname@example.org.
Respondent does not own a trademark or service mark that is identical to the domain name.
Respondent has been contacted through Complainant’s business colleagues to identify whether the domain name was for sale. In all incidents, the answer was positive and that the Respondent always requested “… make an offer.” or “… give me your best offer.”
Respondent says that he registered <fit.biz> to sell health and fitness products over the Internet. Respondent contends to have been in the health and fitness products business for many years on a small local scale and now wants to branch out and expand with a web site.
Respondent says one of the most common meanings of the word “fit” is “physically and mentally sound or healthy, keeps fit with diet and exercise" and definition is related to his business. The word “fit” in the English dictionary has many meanings and acronyms and is generic.
Respondent claims to have appointed a web designer and that he is taking a web design class at Yale in the hope of administering the site once up and running.
Respondent says <fit.biz> is not for sale.
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.
The domain name, <fit.biz>, is identical to Complainant’s trademarks FIT and FIT.BIZ.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
A Respondent in a STOP proceeding may demonstrate its rights or 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).
Respondent contends that he registered <fit.biz> to expand his business of selling health and fitness products. However, Respondent has submitted no proof of preparations to use the domain name in connection with a bona fide offering of goods and services. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).
STOP Panels have found that 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).
Even when a Respondent represents that it intends to use a domain name for a commercial purpose, its use under STOP Policy ¶ 4(c)(ii) must be for a bona fide offering of goods or services.
Panels have held that registration of an infringing domain name in order to opportunistically trade on the goodwill of the Complainant’s mark does not constitute a bona fide offering of goods or services. See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that Respondent’s intended use of the <peachtree.biz> domain name to provide information and services related to Complainant’s PEACHTREE product, but without Complainant’s authorization, would cause customer confusion and was not a bona fide offering of goods or services).
A Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii).
Respondent is not commonly known by “fit” or <fit.biz> pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
Additionally, it is not enough that a Respondent claim that it registered the disputed domain name in anticipation of being known by the name. It must provide some proof that it is commonly known by the domain name to establish rights under STOP Policy ¶ 4(c)(iii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”) (emphasis in original).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
To prove bad faith under the STOP Policy, a Complainant only need prove either registration or use of the domain name in bad faith, not both as the UDRP requires.
The <fit.biz> domain name is identical to Complainant's FIT and FIT.BIZ marks and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant). It can be inferred that Respondent will eventually use the <fit.biz> domain name and create confusion as to the source or sponsorship of its website. Respondent’s actions demonstrate bad faith use within the meaning of Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <fit.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr.
Dated: July 2, 2002
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