International Paper v. Ray Harrington
Claim Number: FA0204000112444
Complainant is International Paper, Memphis, TN (“Complainant”) represented by James B. Burks. Respondent is Ray Harrington, Torquay, UNITED KINGDOM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strathmore.biz>, registered with Schlund & Partner AG.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no conflict in serving as Panelist in this proceeding.
Panelist is Judge Karl V. Fink (Ret.)
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”).
The 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 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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 4, 2002.
On July 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Karl V. Fink, (Ret.) as single Panelist.
Transfer of the domain name from Respondent to Complainant.
International Paper markets writing paper under the name Strathmore in major world markets, and has registered Strathmore as a US trademark.
Complainant knows of no commercial usage of Strathmore by the Respondent.
Use of this name would conflict with Complainant’s registered trademark usage.
Respondent was successful in bidding for the domain name <strathmore.biz>. Respondent runs a self-catering holiday and shorthold residential block of flats called Strathmore Apartments, Scarborough Road, Torquay, Devon, England, and has done so for fifteen years.
Respondent is not in the business of selling writing paper and therefore, is not in conflict with International Paper.
There are many businesses that have ‘Strathmore’ as part of their trading name. YELL.COM gives 60 in the UK. There is also a very famous product called Strathmore Water, whose name is a registered tradename in the UK.
As for existing domains: <strathmore.co.uk> is a Management Consultancy, <strathmore.net> is a school in Kenya, and <strathmore.org> is a school in Maryland.
For the reasons set forth below, the Panel finds that Complainant has not proven the necessary elements to have the domain name transferred.
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
International Paper has registered the name “Strathmore” as a United States trademark. The disputed domain name is identical to that mark, in which the Complainant has rights.
Complainant has proven this element.
Respondent’s Rights or Legitimate Interests
Respondent has rights or legitimate interests in the name “Strathmore”, having used it for 15 years in connection with his Strathmore Apartments in England. This satisfies the requirements of STOP Policy paragraph 4(c)(ii).
Complainant has not proven this element.
Registration and Use in Bad Faith
Complainant has not proven this element.
The Panel orders that Complainant’s request that the domain <strathmore.biz> be transferred is denied. Subsequent challenges to this domain name, against the Respondent, under the STOP Policy, shall not be permitted.
Judge Karl V. Fink (Ret.)
Dated: July 25, 2002
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