West Coast Computer Products v. Freedom Communications Inc.
Claim Number: FA0204000112434
Complainant is West Coast Computer Products, Culver City, CA (“Complainant”). Respondent is Freedom Communications Inc, Lake Forest, CA (“Respondent”).
The domain name at issue is <socal.biz>, registered with 123 Registration, 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.
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 May 20, 2002.
On July 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <socal.biz> domain name is identical to Complainant’s SOCAL mark.
2. Respondent does not have any rights or legitimate interests in the <socal.biz> domain name.
3. Respondent registered the <socal.biz> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Since 1994, Complainant has used the SOCAL.COM moniker to promote and identify itself as a publisher and a directory for the geographic locale of Southern California. Complainant asserts that SOCAL.COM is a trademark associated with its publishing and directories, thereby acting as a source identity for its products and services.
Respondent registered the <socal.biz> domain name on March 27, 2002. Complainant’s Submission contends that Respondent is involved in the same industry offering nearly identical goods and services. Respondent allegedly contacted Complainant attempting to transfer the domain name.
Complainant includes a detailed analysis of Neulevel’s alleged mishandling of the registration process. The following brief synopsis describes Complainant’s frustration:
In October 2001, Complainant contends that it originally registered <socal.biz> during the pre-registration process. Soon following, Complainant was notified that the subject domain name’s registration had been placed on hold pending a Los Angeles Superior Court decision. Complainant was also notified of a dispute involving the SOCAL trademark by the company Solvay located in France. On November 8, 2001, Complainant believed they were once again registered to acquire the <socal.biz> domain name registration. However, on December 19, 2001, Complainant received notice from Network Solutions that Neulevel was developing a new registration process and Verisign informed Complainant that they would be the first to receive information about the new process from Neulevel.
After not having any correspondence with Neulevel for a period of about 80 days, Complainant contacted Verisign and was told that the process had already begun and that Complainant may have missed the deadline for registration submission.
On April 8, 2002, Complainant received notification of an IP claim with Respondent and was allowed to file a STOP Claim. Complainant eventually reaches the conclusion that had Neulevel proceeded with the original registration process, Respondent would not be the acting registrant; instead, it would have been Solvay, the aforementioned French company.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
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 asserts that it has been operating in the publishing and directory business under the SOCAL.COM mark since 1994. Although Complainant’s Submission lacks supporting evidence that would reinforce this assertion, in the absence of contradictory evidence, the Panel confirms Complainant’s alleged rights in the mark. The Panel also notes that the issue of rights in the SOCAL.COM mark under STOP Policy ¶ 4(a)(i) is not determinative in this case, thereby avoiding the necessity of using a strict standard of review as to Complainant’s rights. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent’s <socal.biz> domain name is identical to Complainant’s SOCAL.COM mark. Although Complainant’s mark incorporates the “.COM” addition, previous Panels have determined that the deviation is insubstantial because the consuming public will not differentiate between Complainant’s SOCAL.COM mark and Respondent’s <socal.biz> domain name. “When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address.” U.S. Patent and Trademark Office Examination Guide No. 2-99, “Marks Composed, in Whole or in Part, of Domain Names,” Section I (Sept. 29, 1999); see also Defensive Driver Online Ltd. v. Marco Publ’g Corp., FA 112435 (Nat. Arb. Forum July 9, 2002) (finding Complainant’s DEFENSIVEDRIVING.COM mark is identical to Respondent’s <defensivedriving.biz> for the purpose of resolving domain name disputes); see also AJC, Intl. V. None a/k/a Cox Holdings, FA 109367 (Nat. Arb. Forum June 11, 2002) (finding that, for the purpose of domain name disputes, Respondent’s service mark in AJC.COM is equivalent to AJC and thus identical to <ajc.biz>).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant’s Submission fails to sufficiently address Respondent’s lack of rights and legitimate interests in the domain name. Respondent’s contentions are comprised of the following statement:
The domain was registered as a convenience of its customers. The Respondent registered and parked a group of domains in the event one of their customers might want one of them. They in fact [don’t] have a need for the domain at the time of registration.
Complainant does not specifically address STOP Policy ¶¶ 4(c)(i) – (iii) by name, and while it is in the Panel’s discretion to glean pertinent arguments from the Complaint, creating an adequate argument from Complainant’s Submission would stretch the Panel’s discretion too far from its moorings.
Complainant’s Submission suggests that Respondent’s lack of use signifies its lack of rights and legitimate interests in the domain name. However, previous Panels have determined that four months, the approximate amount of time that has transpired in the present case, is an insufficient amount of time to determine passive holding of a domain name. See Meredith Corp. v. City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for eight months is reasonable time to engage in research and development); see also Mondich and Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration); see also Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint. Only after a two-year period of nonuse is there an inference of a lack of bona fide intent to use the name).
Furthermore, although Complainant’s allegations typically shift the burden to Respondent, which usually must demonstrate that it has presented evidence of demonstrable preparations to use the domain name, Complainant has failed in presenting a prima facie case; thus, Respondent never faces the task of fulfilling its burden. Complainant asserts that Respondent registered the domain name “as a convenience of its customers,” but the implications behind that statement are dubious. Complainant also states under its STOP Policy ¶ 4(a)(i) analysis that Respondent is involved in the same business dispensing similar goods and services, yet that statement is in dissonance with Complainant’s later assertions that Respondent merely parked the domain name in the event that “one of her clients wanted one of them.” Either Respondent is using the subject domain name to compete with Complainant or it is passively holding the registration, both of which are unclear according to the Complaint.
Whatever relevance Complainant’s account of its frustration with Neulevel has on its current position is unclear because had Complainant’s preferred hypothetical chain of events occurred, it would still be challenging as Complainant for the subject domain name. The fact that Solvay, a French Company, would be the acting Respondent instead of Freedom Communications, the current Respondent, does not seem to alter Complainant’s position in the least. The advantage Complainant would glean from its preferred circumstances taking place is not apparent to the Panel, nor were they stated in the Complaint.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has not been satisfied.
Complainant indicates in its Submission that, “We do not believe the Respondent is acting in bad faith or malice. They took advantage of a flawed process therefore resulting in this action.” As part of Complainant’s prima facie case it is obligated to demonstrate that the subject domain name was registered or is being used in bad faith. It is within the Panel’s discretion to scrutinize the materials and arguments in Complainant’s favor on account of Respondent’s lack of response. However, even if the Panel determines Complainant’s above statement pertains only to bad faith use, Complainant still has not made a case sufficient to satisfy a STOP Policy ¶ 4(a)(iii) standard of bad faith registration. Complainant merely restates the STOP Policy in its Submission with amended material that asserts, “They registered the domain for the purpose of future use by one of their clients or themselves. Not for use today.” However, a business or corporation proactively attempting to address its customers’ concerns is hardly bad faith registration, and four months is not a sufficient amount of time to determine passive holding.
Complainant alleges Respondent was willing to transfer the domain name in an effort to resolve the dispute amicably. However, Complainant’s Submission fails to provide any evidence supporting these bold contentions. In considering the totality of the circumstances surrounding the present dispute, the Panel finds Complainant’s arguments lack consistency and supporting evidence. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name).
The Panel finds that STOP Policy ¶ 4(a)(iii) has not been satisfied.
Because Complainant failed in establishing all three elements required under the STOP Policy, the Panel concludes that the requested relief shall be hereby DENIED.
Accordingly, it is Ordered that the <socal.biz> domain name REMAIN with Respondent.
By failing to submit a Response, Respondent has not established rights or legitimate interests in the domain name. Because there are remaining IP Claimants for the subject domain name, subsequent challenges under the STOP Policy SHALL be permitted.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 21, 2002
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