Opus Corporation v. Renald Otto
Claim Number: FA0204000112436
PARTIES
Complainant
is Opus Corporation, Minnetonka, MN,
USA(“Complainant”) represented by Dan F.
Nicol.. Respondent is Renald Otto, Berlin, GERMANY
(“Respondent”).
The
domain name at issue is <opus.biz>,
registered with Schlund & Partner AG.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge, has no known conflict in serving as
Panelist in this proceeding.
James
Alan Crary 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 27, 2002.
On
May 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 23,
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 13, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James Alan Crary
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is a licensee under a license agreement with the owner of the servicemark OPUS
and other trademarks in connection with Complainant’s real estate leasing,
purchasing, sales, and management business as well as its residential,
governmental, and industrial building design, construction, and repair
business. The mark has been used in commerce in relation to its businesses
since 1983. Complainant is a licensee and affiliated with the owner of U. S.
trademark numbers 1,262,651 and 2,520,075.
It
was asserted that Respondent had no right or legitimate interest in <opus.biz>.
A search of the German patent and trademark offices did not reveal a trademark
or servicemark filing for the word “opus” registered to Respondent.
It
was believed that Respondent was not presently using the name “opus”
commercially and it was not commonly known by that name nor did it own a
servicemark or trademark identical to the domain name.
Bad
faith was alleged.
The
purpose of the .biz TLD domain is for the conduct of business. A WHOIS .biz
name search indicated that Respondent is an individual, who did not appear to
operate under a business name.
There
was no evidence to indicate Respondent has any business interest associated
with the name Opus. An Internet search located web pages designed and
copyrighted by Respondent which led to the conclusion that Respondent’s
business was web design. There was no mention of the name Opus on any of these
copyrighted web pages.
It
could be inferred from the circumstances that Respondent registered the <opus.biz>
in order to prevent Complainant from using its OPUS mark in a corresponding
domain name. It was asserted that <opus.biz> is identical to
Complainant’s OPUS mark and because of this any intended use by Respondent of
the <opus.biz> domain would cause a likelihood of
confusion by Internet users as to the source and affiliation of the domain.
B.
Respondent
The
word opus is an active part of the English language. It was listed in the Oxford
English Dictionary as of 1809. Opus is an active part of the German
language since the early 18th century according to the “Duden”. It
was asserted that many European languages contain the word “OPUS” as a generic
word meaning “work”.
As
a generic word it was not eligible for trademark registration. Any rights from
an improper trademark registration were weak if not nonexistent.
It
was asserted that the German patent and trademark offices reject any
application for a trademark on a generic word and that registration of a
generic word is illegal under European and “U. S.-American law”.
Respondent
denied bad faith asserting that he registered the domain name <opus.biz>
to conduct business. Respondent’s business interest in the word OPUS would be disclosed
upon request. It was asserted that Respondent’s business was not web design.
Respondent
denied that his use of the domain name <opus.biz> would cause
confusion by Internet users since he and his company always published detailed
contact information on their web pages so as to avoid confusion by Internet
users about the source or affiliation of his web pages.
1. Complainant is a license of the owner of
two U. S. Service Marks (Registration Nos. 1,267,651 and 2,520,075).
2. Complainant or its affiliated companies
have used the OPUS mark in commerce in relation to its various real estate
related businesses since 1983.
3. Respondent registered the <opus.biz>
domain name, but has yet to develop a use for it.
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.
It
was the conclusion of the Panel that Complainant established rights in the OPUS
mark. The service mark is registered with the United States Patent and
Trademark Office. Complainant is affiliated with and a licensee of the service
mark owner.
Respondent’s
<opus.biz>
domain name contains Complainant’s entire OPUS mark. There is nothing in
Respondent’s domain name that adds anything new to Complainant’s mark except
the inconsequential addition of “.biz”. Therefore, the Respondent’s domain name
is identical to Complainant’s OPUS mark.
Accordingly,
the Panel finds that the STOP Policy 4(a)(i) has been satisfied.
Respondent
did not assert that it was the owner or beneficiary of a trade or servicemark
that is identical to the domain name. Respondent maintained that a trademark
registration was not available for “OPUS” since it was a generic word and that
the registration of a generic word is “illegal” under European and “U.
S.-American law”.
The
Respondent failed to set forth facts sufficient to establish rights or
legitimate interests under STOP
Policy 4(c) (ii). It was
asserted that the domain name registration of “OPUS” was for a business purpose
but Respondent failed to disclose what that purpose would be except upon
request. This was insufficient to establish use or demonstrable preparations
for use of the domain name in connection with a bona fide offering of goods or
services. Respondent’s unsupported allegations alone were insufficient to establish
that Respondent’s had rights or legitimate interests in respect to the domain
name at issue. Twentieth Century Fox Film Corp. v. Benstein, FA102962
(Nat. Arb. Forum Feb. 27, 2002). In that case there were allegations as to the
nature of the registration. There was no evidentiary support that Respondent
actually planned dance studios.
Respondent
admitted in the Response that it is known by the business name “Otto &
Partner GbR, Berlin”. The Panel therefore concluded that the Respondent was not
commonly known by the domain name. [STOP Policy 4 (c ) (iii)]
Therefore
the Panel concluded the Respondent failed to establish rights or legitimate
interests in the domain name.
The Rules and Policy of the STOP process
differ from UDRP claims in a very significant and fundamental way. This is
because IP claims could be registered in advance of the .biz registration
process by a trademark owner. The registrant is notified of the potential for
trademark infringement before being allowed to proceed with the .biz
registration. This has the effect of the putting the Respondent on notice that
there are known trademarks using the words in the domain name that belong to a
direct or potential competitor at the time of the registration of the domain
.biz. See Gene Logic Inc. v. Bock,
FA103042 (Nat. Arb. Forum Mar. 4, 2002).
The Panel concluded that there was
circumstantial evidence of bad faith registration for the purpose preventing
the Complainant, the licensee, of the trademark holder from reflecting that
mark in a corresponding domain name. Had the Respondent made a showing that he
was actually using the domain name in a business or that he had made
significant preparations for use prior to notice of the dispute this Panel
might have been able to reach a different conclusion but Respondent’s bare
assertion that it had a business purpose coupled with failure to in anyway
disclose the purpose or provide evidence of a legitimate purpose suggested to
the Panel that it had no bona fide purpose in the registration. See Valspar
Sourcing, Inc. v. TIGRE, FA112596 (Nat. Arb. Forum, June 4, 2002).
The Panel concluded Respondent had notice
of the OPUS mark and constructive notice of Complainant’s rights in relation to
the OPUS mark. Respondent does not deny that it had notice of the mark under
the STOP process.
DECISION
The Panel found for the Complainant and
against the Respondent. In accordance with paragraphs 10 and 15 of the STOP
Policy it is directed that the domain name <opus.biz> be transferred
to the Complainant. Further challenges
against this domain name shall not be permitted under the STOP Policy.
James Alan Crary, Panelist
Dated: July 11, 2002
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