PartnerShip LLC v. Aly Ramzan
Claim Number: FA0204000112450
Complainant is Rebecca Evans d/b/a PartnerShip LLC, Oberlin, OH, USA (“Complainant”) represented by Jennifer L Myron, of Arent Fox Kintner Plotkin & Kahn PLLC. Respondent is Aly Ramzan, Karachi, PAKISTAN (“Respondent”).
The domain name at issue is <partnership.biz>, registered with Tucows, 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 April 27, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 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 20, 2002.
Complainant’s Additional Submission was timely received and determined to be complete on May 28, 2002.
On June 5, 2002, Respondent submitted an untimely additional submission. In its discretion, the Panel considered this submission.
On June 3, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant, PartnerShip LLC, contends that it has rights in the mark PARTNERSHIP through its pending application with the U.S. Patent and Trademark Office (USPTO) to register its mark. Complainant also contends that it has common law rights in the PARTNERSHIP mark based upon its extensive use of the mark in interstate commerce to advertise and promote its shipping services. Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not known as PARTNERSHIP and has not used the domain name in connection with a legitimate web site or a bona fide offering of goods or services. Complainant contends that Respondent registered the domain name in bad faith.
Respondent, Aly Ramzan, has filed a Response identifying the Respondent as Partnership.biz, a Pakstani company in process of setting up a business specializing in “creating partnerships between ISP’s and Product suppliers and provide product and services under a one window operation.” Ramzan has been in this business at the local city level since 1998 and is planning to expand country wide with the help of <Partnership.biz>. Respondent’s web site is under construction. Respondent contends that the domain name is generic. Respondent disputes whether Complaint has acquired any common law rights in the name PARTNERSHIP. Respondent contends that Complainant is not commonly known as “PartnerShip” and that Complainant is known as “NACS”. Respondent contends that he acted in good faith in registering a generic name.
C. Additional Submissions
Complainant contends that that Respondent applied for registration of the domain name <partnership.biz>, which is identical to Complainant’s trademark PARTNERSHIP, with full knowledge that his application was in direct conflict with Complainant’s trademark rights; that Respondent is not commonly known by the domain name or the mark; and that Respondent does not have a bona fide business or commercial use for the domain name.
Respondent contends that Complainant doesn’t have rights in the PARTNERSHIP mark because it just changed its name to PartnerShip LLC in 2001; that the mark is generic; and there are many companies with the name PARTNERSHIP.
1. Complainant, Partnership LLC, is an Ohio Limited Liability Corporation that specializes in meeting shipping needs for small and medium sized businesses. Complainant has been in business since July 2, 2001 and has been using the mark PARTNERSHIP since at least as early as July 2001.
2. The National Association of College Stores, Inc. (“NACS”) is a non-profit corporation incorporated under the laws of the State of Ohio. Complainant is a for-profit subsidiary of NACS that was started in 1990 as a member benefit of NACS, became known as “Associations Connections” by 1994, and was established as a limited liability corporation in the State of Ohio in 1999. In 2001, NACS announced that Associations Connections would be named “PartnerShip LLC” to help improve customer awareness and promote growth. PartnerShip LLC and NACS are separate, distinct and legitimate legal entities.
3. On or about June 4, 2001, Complainant filed a trademark application with the USPTO to register its PARTNERSHIP mark in International Class 039, in connection with developing and managing freight brokerage and shipping services for others through discounted shipping programs, used as early as July 2, 2001. This application is currently pending.
4. Complainant currently offers information about its services on a web site under the domain name <ps500.com>; however, Complainant desires to secure a domain name that is identical to its company name, PartnerShip LLC, so that Internet users may easily find its web site. Accordingly, Complainant filed an IP Claim for the domain name <partnership.biz>, along with an application for registration of the domain name, with Neulevel, the .biz Registry, on or about August 2001. Complainant submitted a second IP Claim in March 2002.
5. Respondent applied for registration of the domain name <partnership.biz>, which is identical to the term PARTNERSHIP. During the selection process with Neulevel, registration of the domain name was awarded to Respondent.
6. Respondent has not yet used the site saying it takes time to establish a site.
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.
Although the disputed domain name is identical to the term PARTNERSHIP, Complainant does not have protectable rights in the mark. Complainant has failed to show proof of a registered trademark. Nor has Complainant shown proof of any common law trademark rights.
Complainant holds no USPTO trademark registration for PARTNERSHIP, and Complainant is not entitled to a presumption of rights in that term. 15 U.S.C. 1057 (b) (establishing presumption of exclusive right to use based on registration); Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., D2001-0405, (WIPO, July 27, 2001) (The terms, Bar Code Discount Warehouse, in which Complainant claims service mark rights is generic or commonly descriptive.). Complainant’s application for trademark registration standing alone does not establish rights or presumptions. 15 U.S.C. 1057 (c) (Contingent on subsequent registration, an application creates a presumption of use); Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., supra.
To the extent the Complainant has any rights in the disputed domain name, those rights must arise from common law rights. See Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Nat. Arb. Forum Feb. 15, 2002). To acquire common law rights, the mark must be shown to have acquired distinctiveness. Id. However, a generic mark is incapable of acquiring any distinctiveness and, as such, is unable to obtain trademark status at common law. Id. Generic terms for goods or services are incapable of functioning as registrable trademarks denoting origin or any specific source. See Dollar Fin. Group, Inc. v. VQM Net, FA 96101 (Nat. Arb. Forum Jan. 25, 2001). The Panel concludes that Complainant cannot establish exclusive rights in the word PARTNERSHIP because the word is generic.
As the Panel has determined that Complainant has no rights in respect to the mark PARTNERSHIP and there are no subsequent IP Claimants, it is unnecessary for the Panel to address the second issue of Respondent’s rights or legitimate interests or the third issue of bad faith.
Complainant’s Complaint is dismissed.
The Honorable Charles K. McCotter, Jr.
Dated: June 13, 2002
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