START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Dana Chase Publications Inc. v. RGnames

Claim Number: FA0204000112441

 

PARTIES

Complainant is Dana Chase Publications Inc., Oak Brook, IL, USA (“Complainant”) represented by Tim Somheil.  Respondent is RGnames, Beijiing, CHINA (“Respondent”) represented by Byeong-guk Choi.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <appliance.biz>, registered with Wooho T&C Co. d/b/a RGNames.

 

PANEL

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

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 1, 2002.

 

On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 June 3, 2002.

 

On June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Fernando Triana, Esq., as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant publishes a magazine named “Appliance” addressed to those involved in the design and manufacturing of consumer, commercial, business and medical appliances. According to the Complainant, the magazine has a worldwide circulation and has been published for 57 years and has used the name “Appliance” since July, 1969. The magazine is also published in the following special editions: European Edition, Latin American Edition and China Edition. The Complainant is also the owner of the domain names<appliancemagazine.com> and <appliance.com>. The latter is a website for U.S. appliance shoppers and buyers.

 

Complainant contends that the domain name <appliance.biz> is identical to the trademark “Appliance” registered by it. Complainant also contends that the Respondent is known to be a reseller of domain names and is not known to make, sell, publish or provide any product, service or website with the name “appliance”. According to the Complainant, the Respondent is not known to have registered the name “appliance” to identify itself or its products prior to registering the <appliance.biz> domain name. The Respondent is not known to have any purpose for registering the domain name other than to resell it or rent it. Therefore, Complainant concludes that the Respondent should have no rights to the name “Appliance”.

 

With respect to bad faith, the Complainant states that the Respondent is a reseller of domain names and promotes this service on the website <Rgnames.com>. Due to the activity of the Respondent and its lack of legitimate purpose for registering the domain name <appliance.biz>, it would become possible for any competitor of Complainant to take control of the Complainant’s trademark “Appliance” in the form of the <appliance.biz> domain name. Complainant also contends that this would be a strategy of the Respondent to force the Complainant to purchase the domain  name at any cost in order to block such competitive use.

 

B. Respondent

 

Respondent contends that the word “Appliance” is generic to the public and must be used by everybody without restrictions on the Internet. According to the Respondent, 1.080.000 web pages are found after a search on Yahoo which involve the word “Appliance”, such as <expertappliance.com>, <appliancesales.com> and <amercian-appliance.com>. The domain names <appliance.net> and <appliance.org> are also registered on behalf of companies different from the Complainant. Respondent also states that the word “Appliance” has a meaning in the English dictionary.

 

Respondent seeks to call the attention of the Panel to a recent WIPO decision regarding the domain name <internetnews.info>[1]. In said decision, the Panel found that the combination of the words “Internet news” can be used by different owners and domain extensions even when existing trademark rights on the part of the Complainant. The Panel also stated that there was no bad faith considering that the domain name was made up of two current English words and its combination could not be considered unusual or sophisticated.

 

Respondent further contends that he obtained the domain name <appliance.biz> by the most fair method among the lot of people who wanted it or needed it. This, because the word “Appliance” is open to the general public on the Internet. This leads the Respondent to conclude that he has legitimate interests in respect to the domain name <appliance.biz>.

 

Respondent states that he never registered <appliance.biz> with the purpose of selling, renting or otherwise transferring it to the Complainant or its competitors.

 

Respondent clarifies that he is not both a reseller and a registrar. Respondent signed an agreement with the registrar Rgnames, by which the registrar manages the domain name <appliance.biz> as its temporary holder on behalf of the Respondent. The registrar and the Respondent are separate persons.

 

Respondent also contends that it will use the domain name <appliance.biz> for its own business, i.e., sales of used cars, which is different from Complainant’s business. Respondent adds that this would not create confusion with the Complainant nor with the Complainant’s marks. However, up to the filing of its response, Respondent has not been able to use the domain name <appliance.biz> as planned due to the fact that the domain name is locked by Neulevel until completion of the controversy. Therefore, Respondent states that he never registered or used the domain name <appliance.biz> in bad faith and shall never use it in bad faith in the future.

 

DISCUSSION AND FINDINGS

 

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.

 

Complainant’s Rights in the Mark

 

Complainant contends that it has rights over the trademark “Appliance”. Although it states in its Complaint that such trademark is “registered”, there is no evidence in the file of the existence of such registration. However, under the STOP Policy, a Complainant may establish common law rights over its mark. Due to the lack of evidence of a registered trademark, the Panel will assume that the Complainant intends to prove that the domain name <appliance.biz> is identical to its mark “Appliance” relying on its common law rights.

 

It is the Panel’s task to determine whether or not the Complainant holds any rights over the mark “Appliance”. The worldwide accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. This distinctive force gives a sign the capability to identify the products or services of its owner and differentiate them from the products or services of other participants in the market. A sign lacks of enough distinctive force when it is generic, confusingly similar to a previous trademark or descriptive, among other causes.

 

In the case of generic terms, such condition must be analyzed in connection with the kind of products or services that are identified with the sign. For example, the word “car” would be generic if used in connection with parts for automobiles but distinctive when used to identify clothing goods or drinks.

 

Notwithstanding, a generic term can achieve distinctive force when due to its use and recognition by the consumer public, the word gets a secondary meaning that allows it to identify products or services without any risk of confusion in the market. In this case the generic term can become a trademark.

 

Studying the particulars of the sign “Appliance” and its use in connection with the commercialization of all kinds of appliances, the Panel finds that such word is a generic term over which the Complainant can not hold trademark rights. Likewise, Complainant has not been successful in proving that the sign has a secondary meaning that could turn it into a trademark. To this end, Complainant must have proved that its use of the sign “Appliance” has added to the generic term such recognition among the consumers that it is immediately identified by consumers with its products or services. Unfortunately, Complainant has failed to prove so and no registration of said term before the USPTO was either found on the file. (See Vietnam Venture Group Inc v. Cosmos Consulting Gmbh finding that “because Complainant has not established rights in the mark, “VVG,” the Complaint must be dismissed.  First, Complainant does not hold a registered trademark in VVG.  Second, Complainant has not demonstrated sufficiently strong identification of its mark such that there would be recognition among Internet users that the mark “VVG” identifies goods or services unique to Complainant.”)[2]

 

After a basic electronic search in the website of the United States Patent and Trademark Office (<uspto.gov>) , the Panel has found more than 350 trademarks either registered or applied for registration, including the word appliance. It has been noted that the word appliance is not registered alone.

 

Also, the Panel wishes to clarify to the Respondent that the fact that the domain names <appliance.net> and <appliance.org> are owned by companies different than the Complainant is not of importance. Considering that the Complainant is a commercial company, it is obvious that it registers its domain names under the “.com” suffix. Had the Complainant been an Internet provider or a Non-Governmental Organization, it would be expected that it registered its domain names under the “.net” or “.org” suffixes. However, this is not the case and Complainant is not expected to have its domain name registered under other extensions rather than the “.com” one.

 

As a generic term, the “appliance” word is of common use and the Complainant can not contend to have exclusive rights over it, since it can be freely used by anyone involved in the business of appliances. (see Efutures.Com LLC v. Cannon Trading Company Inc.)[3]

 

As a consequence, the Panel finds that the Complainant does not have trademark rights over the word “Appliance” and then the Complainant has failed to meet the requirements of  paragraph 4(a) (i) of the STOP Policy.

 

Respondent’s Rights or Legitimate Interests

 

Complainant states that Respondent lacks of any right or legitimate interest over the domain name <appliance.biz>. According to paragraph 4 (c) of the STOP Policy, Respondent shall demonstrate its rights or legitimate interests to the domain name in particular but not limited to the following:

 

i.          Proving that he is the owner or beneficiary of a trade or service mark that is identical to the domain name; or

ii.        Proving that before any notice of the dispute, he used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

iii.      Proving that he has been commonly known by the domain name, even if he has acquired no trademark or service mark rights.

 

In the present case, the Panel has found that the word “appliance”, included in the domain name <appliance.biz> is a generic term when used in connection with different types of appliances. Consequently, it is a term that can be used without limitation by everyone involved in the business of appliances.

 

The Panel considers that the sole connection with the business of such devices grants a person the legitimate interest to use the word “appliance” to identify its products or services, and neither the Complainant nor the Respondent can contend that they have an exclusive right over such word excluding all the other participants in the same area of commerce.

 

Respondent states in its response that it registered the domain name <appliance.biz> with the intention to use it in connection with its business of selling used cars. Therefore, Respondent has shown that the he registered the domain name with the purpose of using it in connection with a bona fide offering of goods or services. Additionally, Respondent has stated that he is willing to take all the precautions required to avoid any risk of confusion in the public with the domain name <appliance.com>, owned by Complainant.

 

Although Respondent has not shown any evidence to demonstrate the statement, regarding his business of selling used cars, the Panel considers that in the STOP cases the required burden of proof is low and the Respondent’s allegation should be accepted as evidence, moreover since it was not contested by the Complainant. Taking into account that the commercialization of used cars could be a business related to appliances (i.e. selling appliances for used cars), and that Respondent does not have the intention of misleading users to his domain name, Respondent has a legitimate interest in the domain name <appliance.biz>, and can not be excluded by the Complainant from using it as planned by Respondent.

 

It is important to note that, according to the Respondent, the domain name <appliance.biz> has not been used due to the fact that it is locked by the Registrar, Neulevel, as a result of the commencement of the present proceeding. Notwithstanding, Respondent has represented that he will use the domain name in connection with a bona fide offering of goods or services once it is allowed to do so. The Panel finds that under the STOP Policy it is very common that the domain names subject of the controversies had not been used by its owners due to the particularities of the proceeding. In fact, many of the domain names subject to STOP proceedings do not get to become active before the commencement of the proceeding. However, in the present case the Respondent has made a representation that he will use the domain name once the controversy is concluded in his favor for a bona fide offering of goods or services. This representation will suffice for the Panel to conclude that the Respondent has legitimate rights over the domain name <appliance.biz>.

 

Finally, the Panel wishes to remind that the “.biz” extension was created with the purpose of enlarging the possibilities of the Internet when related to commercial business, due to the saturation of the “.com” extension. When related to generic terms, which registration is not forbidden in the field of domain names, it is clear that since no one can contend to have exclusive rights over the term, anyone with legitimate interest over the name is entitled to register it. It would then be useless to contend that the owner of the registration over the “.com” domain name has a superior right over the “.biz” domain. Then, if Complainant intended to use this argument in any manner, it is hereby denied.

 

Therefore, the Panel finds that the Respondent has legitimate interests over the domain name <appliance.biz>.

 

Registration or Use in Bad Faith

 

Since the Panel has found that the domain name <appliance.biz> is not identical to a trademark over which the Complainant has rights and that Respondent has legitimate interests over the domain name, it would not be necessary to study if the Respondent has acted in bad faith, as stated in the Complaint.  However, the Panel wishes to make the following comments with regard to this issue.

 

Complainant contends that Respondent has registered the domain name <appliance.biz> in bad faith. Complainant states that Respondent is known as a reseller of domain names and in the absence of any demonstrable legitimate interest over the domain name, it can be concluded that it registered the domain name in bad faith with the sole purpose of reselling it to Complainant or its competitors.

 

Notwithstanding, Complainant ignored that it was its burden to demonstrate the existence of bad faith in the part of Respondent.

 

Respondent, however, clarified the nature of his activities and his relationship with the registrar RGnames, which would have caused the impression in Complainant that Respondent was both a registrar and a reseller of domain names.

 

The Panel finds that Complainant failed to meet its burden of proof regarding the bad faith of Respondent and also finds acceptable the explanations given by Respondent with respect to the purpose of the registration of the domain name <appliance.biz>. Consequently, the Panel finds that the Respondent has neither registered nor used the domain name <appliance.biz> in bad faith.

 

Reverse Domain Name Hijacking

 

In accordance with STOP Rule 1, Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.

 

The Panel notes that the Complainant did not demonstrate its rights in the disputed domain name.  The Panel also notes that Complainant must have been aware of the fact that the word “Appliance” is a generic term in the business of appliances, which makes it impossible to prevent others from using such term in connection with the same business.  Based on this, the Panel believes it appropriate to issue a finding that the Complainant has attempted reverse domain name hijacking. (see Aspen Grove, Inc. v. Aspen Grove[4]).

 

DECISION

 

Complainant’s Complaint is hereby dismissed. Subsequent challenges to this domain name, as against the Respondent, under the STOP Policy shall not be permitted against this domain name. 

 

Fernando Triana, Panelist
Dated: July 9, 2002

 

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