Spherion Corporation v. Neal Solomon
Claim Number: FA0204000112454
Complainant is Spherion Corporation, Ft. Lauderdale, FL (“Complainant”) represented by Rochelle M Ammiano. Respondent is Neal Solomon Gloversville, NY (“Respondent”) represented by Stephen H. Stugeon, of Law Offices of Stephen H. Sturgeon & Associates, PC.
The domain name at issue is <saratoga.biz>, registered with All Domains.com, 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.
Tyrus R. Atkinson, Jr., 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”).
On May 23, 2002, Respondent’s attorney requested an extension of time with which to submit a Response, without obtaining Complainant’s consent. The Forum granted Respondent’s attorney’s request on May 24, 2002 and extended the Response deadline to June 12, 2002.
A timely Response was received and determined to be complete on June 12, 2002.
On July 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant owns a subsidiary named Saratoga Institute.
Saratoga Institute is a business organization offering consulting services in the field of human resources.
Complainant’s principal office is located in Ft. Lauderdale, Florida.
Complainant owns a Service Mark registration for the word, SARATOGA, with registration date of February 19, 2002.
Respondent should not be considered to have any legitimate rights in the domain name, <SARATOGA.BIZ>. Respondent owns no trademark or service marks incorporating the SARATOGA word mark. Respondent is engaged in the practice of financial planning and does not appear to have any affiliation with any good or services offered under the name SARATOGA. Respondent has no history of conducting a bona fide offering of goods or services.
Saratoga Institute has been using the SARATOGA name since 1979 and has build up goodwill in the name.
Complainant is not in a position to make any allegations of fraud against Respondent, as it has no facts to back up such a claim.
Respondent is a resident of Saratoga County, New York and conducts business activities in the county. Since 1983, he has been engaged in numerous demonstrable activities to market his business within the county. He provides marketing and advertising services to other businesses in Saratoga County. He registered the domain name <SARATOGA.BIZ> in order to utilize the domain name for the furtherance of his business activities.
Respondent’s business activities include financial planning, retirement planning, retirement projections, pension option analysis, investment and wealth management, and other financial services.
The word, SARATOGA, is used extensively by businesses in Saratoga County, New York, as a geographical indicator by many businesses. The trademark registration of a generic word for certain limited services should not enable the Complainant to take away all domain names containing the word throughout the world.
Complainant fails to carry the burden of proof as to the issues of rights and interests and bad faith.
Respondent made preparation for the use of the domain name in connection with a bona fide offering of goods and services by a number of business contacts and consultations prior to any notice of the dispute.
1. Complainant is the parent company of Saratoga Institute.
2. Complainant is the parent company of the organization which owns the United States Patent and Trademark Office Registration No. 2,539,011 for the Service Mark, SARATOGA with registration date of February 19, 2002 and showing first use in commerce as September 1979.
3. The Service Mark is granted for the purpose of it being used in human capital consulting, and related services.
4. Respondent is an individual in the financial planning business that lives and does business in Saratoga County, New York.
5. Respondent registered the domain name, <SARATOGA.BIZ> on March 27, 2002.
6. The Service Mark, SARATOGA, and the domain name, <SARATOGA.BIZ>, are identical.
7. Complainant has limited rights and interests in the word, SARATOGA.
8. Complainant fails to prove that Respondent is without rights and interests in the domain name.
9. Respondent proves that, prior to notice of the dispute, that he made demonstrable preparations to use the domain name in connection with a bona fide offering of services.
10. Complainant fails to prove that Respondent has committed any acts of bad faith in the registration or use of the domain name.
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 has rights in the mark, SARATOGA, by virtue of the registration of the service mark with the United States Patent and Trademark Office. Complainant’s rights are limited, under the evidence presented in this proceeding, as discussed in the next section. The mark, SARATOGA, and the domain name, <SARATOGA.BIZ>, are identical. see Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA102811 (Nat. Arb. Forum Feb. 8, 2001).
Complainant’s entire allegations on this issue are as follows: “Neal Soloman, the Registrant of SARATOGA.BIZ, should not be considered to have any legitimate rights in this domain name. Upon completing a thorough search on the Unites States Patent and Trademark Office database, Respondent does not appear to own any trademarks or service marks incorporating the SARATOGA word mark. Respondent is engaged in the practice of financial planning and does not appear to have any affiliation with any good or service offered under the Saratoga word mark. Accordingly, since Respondent has no history of conducting a bona fide good or service under the SARATOGA name, it has not established any goodwill in the Saratoga name, and thus has acquired no trademark or service mark rights.”
The allegation that Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name, is not disputed by Respondent. Thus, rights to and legitimate interests in the domain name, by the method set out in Paragraph 4(c)(i), is not available to Respondent.
Respondent does not dispute the allegation that Respondent has not been commonly known by the domain name. Thus, rights to and legitimate interests in the domain name as set out in Paragraph 4(c)(iii), is not available to Respondent.
Complainant fails to address the issues set out in Paragraph 4(c)(ii). That Paragraph reads that one may demonstrate rights or legitimate interests in the domain name by showing as follows: “Before any notice to you of the dispute, your use of, or 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…”
Both Complainant and Respondent are required to produce “concrete evidence” to support their allegations in a domain name dispute case. see PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 14, 2002) accepting the reasoning set out in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
In Do The Hustle, LLC v. Tropic Web, one of the concrete evidence methods suggested was the inclusion of affidavits of third parties as opposed to bare allegations.
Respondent undertakes to present concrete evidence that he made demonstrable preparations to use the domain name for a bona fide offering of services by offering the sworn affidavit of Respondent and nine other individuals. In his Affidavit, Respondent admits that he searched the trademark register and found that SARATOGA was a trademark registration of Complainant but decided that the services offered by Complainant were so different than those supplied by Respondent that he was authorized to register <SARATOGA.BIZ>. Respondent states that he choose the name, <SARATOGA.BIZ>, because it related to his home base of operations, Saratoga County, New York. Respondent engaged in numerous discussions and planning meetings with technical people and other business people to build a business plan for <SARATOGA.BIZ>. Respondent names the individuals with whom he consulted and the content of the discussions held between the parties. All of the individuals with whom Respondent consulted made their affidavits supporting Respondent’s statements. Scott Fultz testified his company, Mountain Media, an e-commerce, application hosting, graphic design, and web hosting company, spent considerable time with Respondent regarding the utilization of <SARATOGA.BIZ>. James Boykin’s Affidavit states that he is in the business of coding Web sites. He engaged in lengthy planning discussions about prospective business use of the domain name, <SARATOGA.BIZ>. He states that he knows “that Mr. Soloman intends to use the domain name SARATOGA.BIZ (1) to serve his existing business and (2) for the possible offering of advertising services to businesses in Saratoga County…” The other affidavits support other portions of Respondent’s Affidavit.
Evidence of demonstrable preparations for use of the domain name is shown. The next question presented is whether the demonstrable preparations are “in connection with a bona fide offering of goods or services.” Paragraph 4(c)(ii). It is not, of course, a bona fide offering of services where one makes demonstrable preparation to use another’s trademark to attract users to the Respondent’s domain name. see Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA102971 (Nat. Arb. Forum Feb. 25, 2002). One may not trade on the goodwill of another and conduct a bona fide offering of services. see William L. Lyon & Assoc., Inc. v. Yata, FA103043 (Nat. Arb. Forum March 21, 2002).
On the other hand, a Respondent may fairly use descriptive or generic terms as a commercial domain name and where Respondent shows that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business. See Eastbay Corp. v. VarandaGlobal.com Inc., FA105983 (Nat. Arb. Forum May 20, 2002).
Respondent presents as an Exhibit to the pleadings copies of several pages of the telephone book published to list the telephone numbers in Saratoga County, New York. The pages list hundreds of businesses that use the word “Saratoga” as part of the business name. The Panel is convinced that the word SARATOGA is not exclusively associated with Complainant’s business
Respondent argues that the word, SARATOGA, is a generic term for a geographical location. Complainant does not address this issue.
It has been held that in the United States a geographically descriptive name is to be treated as a generic term and does not by its registration with the United States Patent and Trademark Office become absolutely protectable. see American Airlines, Inc. v. Webwide Internet Communication GMBH, FA112518 (Nat. Arb. Forum June 13, 2002) which held that the registered mark “American” would not prevent Respondent from retaining the domain name, <American.Biz>. see also Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) which held that the Complainant could not have superior right to use “Berkeley Springs” to the exclusion of other entities, particularly where there were so many other businesses that used geographic names as part of their business name.
“In this regard also, the Policy applies to geographical indications that function as trademarks in like manner as it applies to generic words that function as trademarks.” MIRC Elecs. Ltd. v. Onida.com, D2001-1061 (WIPO Dec. 20, 2001).
“While geographical names are not protected as such under the Policy, they may nevertheless qualify for protection under the Policy as trademarks if shown by evidence of their use to have become distinctive of the goods and services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive. It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark.” Id.
“In some cases, place names, either alone or in combination with other elements, have been held to constitute trademarks or service mark…but in all such instances the Panels’ decisions were based on the finding that the geographical name had acquired distinctiveness vis-à-vis the goods and services of the Complainant by virtue of the activity carried out by the Complainant.” Valdifiemme.ir srl v. Paolo Alzalamira /Fenix Lab.srl, D2002-0149 (WIPO Apr. 30, 2002).
The only evidence presented by Complainant that could be considered relevant to this issue is the bare allegation that “Saratoga Institute has built up a great deal of goodwill in the Saratoga name and has established both domestic and international recognition under the name” and the inclusion of a brochure of Saratoga Institute stating the nature of its business activities. This is not the quality of proof necessary to carry the issue for Complainant. see PRL Holdings, Inc. v. Search Hound, DBIZ2002-00010 (WIPO Feb. 14, 2002).
The Panel finds that Complainant failed to prove that it has rights or interests in the mark, SARATOGA, that are superior to those possessed by Respondent. Generally, the first to register a domain name containing a generic mark should prevail absent bad faith. see CRS Technology v. Condenet Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000).
Complainant fails to carry its burden on this issue. Respondent must be found to prevail in this proceeding.
Complainant presented no evidence of Respondent’s bad faith registration or use of the
The Panel decides that the Complaint be dismissed and the demand that the domain name, <SARATOGA.BIZ>, be transferred to Complainant is denied. The Panel finds that further challenges are to be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 22, 2002
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