Foundation IT Pty Limited v. David Sprake
Claim Number: FA0204000110856
PARTIES
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.
A.
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.
B.
Respondent
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; name@customer.fit.biz, joe@bloggshoes.fit.biz.
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.
(Ret.), Panelist
Dated: July 2, 2002
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