Kalamazoo Security Print v. Daniel Thralow
Claim Number: FA0204000112430
Complainant is Kalamazoo Security Print, Birmingham, UNITED KINGDOM (Great Britain) (“Complainant”) represented by Kevin Bassett. Respondent is Daniel Thralow, Duluth, MN, USA (“Respondent”).
The domain name at issue is <kalamazoo.biz>, registered with Network Solutions, Inc.
The undersigned, Jacques A. Léger, Q.C. acting as Panelist, 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.
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 has submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on May 1, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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, but the exhibits were only received after the Response was accepted by the Forum who accordingly did not consider the exhibits to be in compliance with STOP Rule #5(a). However, the Panel has decided to use its discretion in considering the exhibits given that they had been received before the due date of May 29, 2002; moreover, given that no negligence was shown on the part of Respondent for such delay, it would appear to be unequitable to ignore the exhibits in the circumstances and time frame they were received.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jacques A. Léger Q.C as the single Panelist.
The Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant contends that the <kalamazoo.biz> domain name is identical to Complainant's KALAMAZOO mark. Complainant submits that the Kalamazoo Security Print has been established since 1896 and that it has held the trade mark KALAMAZOO for many years.
Complainant claims that the Respondent has no rights or legitimate interests in the domain name.
The Complainant contends the domain name should be considered as having been registered in bad faith on the basis that even if <kalamazoo.biz> is currently unavailable, the Respondent is making it difficult for it and causing obstruction if it wanted to sell its products via <kalamazoo.biz> domain name.
Respondent contends that Complainant has not satisfied its burden of proof. He disputes that Complainant owns any rights in the name KALAMAZOO apart from its use selling stationary, printing services, and other goods, referred to in the various trade-marks certificates filed with the Complaint. He claims that the use of KALAMAZOO as a city name, and common word, dates well before the Complainant's trade mark. Moreover, he states that there are many other businesses incorporating the word KALAMAZOO, without evidence of Complainant objecting to such use; therefore the Complainant "has no greater right to object to the Respondent's use of the word in it's domain name than it has against another user". Respondent finally contends that the Complainant has not brought forward evidence of KALAMAZOO's exclusive identification with Complainant's business . . . nor that they are distinctive of the Complainant’s services.
Respondent claims that he has rights and legitimate interests in the domain name. He states that he intends to procure the city of Kalamazoo, Michigan, with a marketing contract, based on his history of purchasing or registering common or generic words to be used in marketing and e-commerce. Given his business background and history, the Respondent claims that "he picked the domain www.kalamazoo.biz as a natural extension of his business of marketing, recruitment and retention for municipalities." Moreover, the Respondent claims to enjoy common law rights in the name KALAMAZOO given the numerous years of use of the name by the county and municipality of Kalamazoo, Michigan.
Finally, Respondent argues that he has not registered and is not using the domain name in bad faith, the Complainant having failed to produce evidence that he "registered the disputed domain name for the purpose of selling, renting, or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; to disrupt the business of a competitor". He claims to have picked up the domain name as a natural extension of his marketing business recruitment and retention for municipalities.
Having reviewed the complaint and evidence submitted by the parties, the Panel makes the following findings:
· Complainant does have rights in the mark KALAMAZOO for the wares and services it deals in or with as submitted in evidence. Complainant has used continuously the KALAMAZOO trademark over the years in association with stationary, security printing techniques and security products as shown in the company brochure and literature. However, Complainant has failed to show that its reputation extended beyond these services and products.
· The disputed domain name <Kalamazoo.biz> is identical to Complainant's trademark KALAMAZOO.
· Respondent did not satisfy its burden to show that it has rights in the domain name <kalamazoo.biz> as there has been no evidence of use or demonstrable preparations on behalf of Respondent to use the disputed domain name.
· Complainant has not satisfied its burden to show that Respondent has acted in bad faith in either registering the domain name in dispute; KALAMAZOO has been the name of a city in Michigan for over 165 years and a term used as a first name for a number of businesses in the State of Michigan.
· There has been no evidence of use to show that both parties are in competition with one another, directly or indirectly, as they each deal with entirely different wares and services.
Section 15(a) of the STOP Rules requires the 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.”
Section 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:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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 has exercised its discretion to rely on relevant UDRP precedent wherever 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. Obviously, 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.
On this first issue, the Panel finds that Complainant has satisfied its burden in showing that it has rights in the mark KALAMAZOO given the fact that it has registered it in some 40 countries, as shown in the submitted exhibits including the trademark certificates and the company literature. It has also been using the mark for many years and has developed a reputation amongst printing services enterprises. Noteworthy though that the evidence adduced by Complainant has failed to show that its exclusivity for the mark should naturally extend beyond the wares and services for which it is registered, particularly given the fact that the word KALAMAZOO is also a geographical location.
Because of the intended commercial nature of websites hosted at ".biz" domain names, STOP Policy 4(c) does not contemplate that a Respondent may demonstrate its rights/interests through legitimate or non-commercial fair use as the corresponding Section in the UDRP does.
The Panel finds that the Respondent does not have any rights in the name KALAMAZOO. The Respondent has failed to prove, before any notice of the dispute, its use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Although the Respondent claims that "the domain name www.kalamazoo.biz is a perfect and very valuable extension of the municipality marketing and business recruitment services offered by " the Respondent, the domain name <kalamazoo.biz> is still not operable. Respondent's "unsupported, self-serving allegations are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue." See 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). Additionally, it is not enough that a Respondent claim that it registered the disputed domain name in anticipation of being known by the name.
To prove bad faith under the STOP Policy, a Complainant only needs to prove either registration or use of the domain name in bad faith, not both as the UDRP requires. STOP Policy 4(b) is otherwise very similar to UDRP 4(b). Complainant may demonstrate Respondent's bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark. While under the STOP Policy there is no pattern of conduct requirements, the simple allegation is not enough to conclude automatically to bad faith, particularly that in this case:
i) Complainant did not show that there was competition between itself and the Respondent;
ii) While Complainant has some trademark rights for KALAMAZOO in association with the wares and services it offers and produces, it has failed to adduce evidence which would justify extending trade-mark protection beyond.
While Panel acknowledges that the word "competitor" has been broadly interpreted both under STOP Policy and UDRP to encompass claims by entities that might not traditionally be viewed as competing, in the case at hand, there is no evidence that Respondent registered the domain name primarily to prevent Complainant of so doing or for the purpose of disrupting the business of a competitor. Furthermore, there is no evidence to the effect that Respondent, by registering the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website, if only as shown by the evidence adduced by Complainant, it does not itself use its trade-mark for its own website, and it has not objected to the use by other businesses of said mark. As appears from the letterheads filed as exhibits, the Panel has noted that Complainant itself chose to adopt for its website the address <ksp.co.uk>. Therefore, in the circumstances, it would be difficult to infer prima facie to Respondent an intention of bad faith in choosing the term KALAMAZOO for its own services or wares. This is certainly not conclusive of bad faith.
In addition, nothing in this case indicates that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent's objective does not seem to be to prevent the Complainant from using the mark as a domain name, nor to disrupt its business and create confusion. There is not an iota of proof of Respondent having ever engaged in such a behavior. Noteworthy, the mark KALAMAZOO has been used by other businesses situated in the region of Kalamazoo, Michigan and there has been no evidence that Complainant has challenged or complained of such use by third parties. In connection thereto, see Int’l Data Group, Inc. v. Applied Media Cos., D2000-0191 (WIPO June 6, 2000), where it was found that the registration of a domain name identical to a registered mark is not bad faith if the Respondent did not know of Complainant, the mark is not a coined word, nor is a particularly well-known or famous mark except in the market segment the Complainant serves and, importantly, if the Complainant's mark is a common English word that could also be used to refer to other products.
For all of the above, Complainant has failed to meet its burden that the domain name had been registered or was being used in bad faith by Respondent.
For the foregoing reasons, the Panel concludes that:
- The domain name registered by the Respondent is identical to the trademark to which the Complainant has rights;
- The Respondent has no rights or legitimate interest in respect of the domain name; but
- The domain name has not been registered and is not being used by the Respondent in bad faith.
The Complainant having failed to meet its burden on at least one of the three elements, which need to be proven cumulatively under the STOP Policy; accordingly, the Panel dismisses the Complaint. Further challenges under the STOP Policy against this domain name shall be permitted.
Jacques A. Léger,
Dated: June 27, 2002
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