NATIONAL ARBITRATION FORUM
File No.: FA0204000112469
GAIAM, INC.
Complainant,
v. DECISION
NIELSEN,
Respondent.
PARTIES:
Complainant
is Gaiam Inc., Broomfield, CO, USA
(“Complainant”) represented by William Brown. Respondent is Nielsen, Koebenhavn,
DENMARK (“Respondent”) represented by Jens Nielsen.
REGISTRAR AND DISPUTED DOMAIN NAMES:
The
domain name at issue is <gaia.biz> registered with Joker.com.
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.
Hon. H. Curtis Meanor, 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 April 26, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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
Response was received and determined to be complete on June 19, 2002.
On
June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. H. Curtis
Meanor as the single Panelist.
Respondent
claims that he did not receive the documents pertaining to this case until May
29 and that his time to respond should run from that date.
In
the interest of having claims decided on the merits and not by default and
because Complainant has not been prejudiced in the presentation of its case by
the late submission, Respondent’s opposition documents are accepted as timely.
RELIEF SOUGHT:
Transfer
of the domain name from Respondent to Complainant.
PARTIES’
CONTENTIONS:
A. Complainant
The
Complainant, Gaiam Inc. is a for-profit company organized under the laws of the
State of Colorado and licensed for business in Germany and the European
community. It is the owner of the
following trademarks:
1.
Trademark
“Gaia”, registered May 16, 1995 for computer software for pen-based computer
systems for text processing, business presentations, personal business
communications and personal productivity functions.
Complainant claims that it is
currently preparing trademark filings to add international classes 35 and 41 to
the “Gaia” trademark for wholesale distributorships and mail order catalog
services featuring health, fitness, exercise and yoga products.
2.
Trademark
“Gaia Generation” registered April 13, 1999 for mail order catalog services,
audio recording and production.
3.
Trademark
“Gaiam” registered May 11, 1999 for pre-recorded audio tapes and video tapes,
wholesale distributorships, mail order catalog and retail store services, audio
and video tape recording and production services, environmental product testing
services.
4.
Trademark
“Gaiam” registered March 16, 1999; description - nutritional supplements.
Complainant claims it is a
leading provider of information, goods and services to customers who value the
environment, a sustainable economy, healthy lifestyles, alternative healthcare
and personal development. The company’s
operations concurrently generate in excess of $100 Million in annual revenues
in the United States and Internationally.
Gaiam Inc. stock is traded in
the United States on the NASDAQ stock exchange under the ticker symbol of
“Gaia”. Gaiam Inc. has invested
substantial funds and resources building consumer awareness of the Gaiam brand
and trusts its products to its “Gaiam”, “Gaia Generation” and “Gaia” trademarks. The company also has a family of websites,
including <Gaiam.com> and <Gaia.com>, under which much of its
business is transacted. Contributing to
Gaiam’s competitive and leadership position in this industry is the general
public’s and internet users familiarity with and understanding of Gaiam, Inc.
via its trademarks and website domains utilizing the words “Gaia” and
“Gaiam”. Complainant claims that the
domain name <gaia.biz> is identical to the Gaiam trademarks
described above and its “GAIA” symbol for its stock being traded on the NASDAQ
stock exchange. Complainant also
asserts that name <gaia.biz> is substantially similar to Gaiam’s
website domain names, <Gaia.com> and <Gaiam.biz>. Complainant asserts that there would be a
strong likelihood of confusion among the public and internet users between the
Respondent and the Complainant if Respondent is permitted to use the domain
name <gaia.biz>.
Complainant further asserts that the use of the domain name <gaia.biz>
by Respondent would diminish the value of Gaiam’s brand and public reputation
with the public at large, both in the United States and Internationally. Complainant asserts Respondent is not the
owner or beneficiary of the trade or service mark “Gaia”, “Gaiam”, or any
derivation thereof. Complainant alleges
it conducted an extensive search of Danish, European Community and U.S.
trademark and service mark registrations and has determined Respondent has not
registered any such trademarks or service marks. Complainant has also conducted a search of Danish telephone and
business directories and has not been able to identify a legitimate use of the
domain name <gaia.biz> by the Respondent. Complainant also alleges that an extensive
search of Respondent’s online presence has detected no evidence that Respondent
has ever been commonly known by the disputed domain name or any derivation
thereof. There also appears to have
been no activity, business or otherwise, conducted by Respondent in connection
with the names “Gaia” or “Gaia.biz” or any derivation thereof.
Complainant
concludes by asserting that the use of the domain name <gaia.biz>
by the Respondent will attract users to the Respondent’s website and would
create confusion with the existing trademarks and domain names used by Gaiam,
Inc.
B. Respondent
Respondent
begins by noting that the name “Gaia” is a Greek word for the earth and in
Greek Mythology “Gaia” is the name of a God of the Earth. Respondent claims that the name Gaia during
the last twenty to thirty years has become a term for environmental and
ecological issues. He states that his
marketing of environmental and ecological information and products is not in
competition with the Complainant. It is
asserted that the domain name was not registered by the Respondent for the
purpose of selling, renting or transferring a domain name to Complainant or to
a competitor of the Complainant.
Respondent notes that when he started his company, which is in the
business of supplying environmental and ecological information and products, he
searched the name “Gaia” and found that it was already taken. Thereafter, he registered other domain
names.
FINDINGS:
1.
Complainant
has met its burden to prove by a preponderance of the evidence that the domain
name at issue is identical to trademarks in which Complainant has rights.
2.
Complainant
has met its burden to prove by a preponderance of the competent evidence that
Respondent has no rights or legitimate interest in respect to the domain name
at issue.
3.
Complainant
has met its burden to prove by a preponderance of the evidence that the domain
name at issue has been registered in bad faith.
DISCUSSION:
Paragraph
15 (a) of the STOP Rules instruct 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 principle of law it deems applicable.”
Paragraph
4 (a) of the STOP policy requires that Complainant must prove each of the
following three elements to obtain an order
that the domain name should be transferred:
1.
the domain
name is identical to a trademark or service mark in which the Complainant has
rights;
2.
Respondent
has no rights or legitimate interest in respect of the domain name;
3.
the domain
name has been registered or is being used in bad faith.
Identical or Confusingly Similar
As
noted above, the Complainant is the owner of several registered USPTO
trademarks, one of which is “Gaia”. The
use of the suffix “biz” by Respondent as distinguished from the suffix “.com”
by Complainant is irrelevant. The
differences in these suffixes cannot be utilized to distinguish the domain
names and without the suffix they are of course identical. See Pillsbury Co. v. Prebake Scandanavia,
FA102970. (Nat. Arb. Forum Jan. 31,
2002).
Rights and Legitimate Interests
Respondent does not claim a
registered trademark or service mark for “Gaia” and leaves uncontradicted
Complainant’s evidence that an extensive search of Danish, European Community
and U.S. trademark and service mark registrations has determined that
Respondent has not registered any such trademarks or service marks. Therefore, it must be concluded that
Respondent has no registered trademark or service mark for “Gaia”.
Respondent has not claimed that he
has used the name “Gaia” in a bona fide offering of goods or services and
leaves uncontradicted Complainant’s evidence that a search of Danish telephone
and business directories has not been able to identify a legitimate use of the
domain name <gaia.biz> by the Respondent. Therefore, it must be concluded that the
Respondent has not used the name “Gaia” in a bona fide offering of goods or
services.
It appears that there has been no
business activity using the name “Gaia” by the Respondent nor does the
Respondent claim that such activity has taken place. Therefore, it must be concluded that Respondent has never been
commonly known by the domain name in dispute.
Registration and Use in Bad Faith
Complainant has a $100 Million
annual business. Respondent asserts
that it and Complainant do not compete.
If there is any present competition between Respondent and Complainant
it is minimal. Nonetheless, Respondent
researched the domain name “Gaia” prior to registering it with Joker.com and
his search showed him that the name “Gaia” was already in use by Complainant. Since Complainant has a wide range of products
for sale, those familiar with Complainant upon seeing Respondent’s website
domain name, <gaia.biz>, obviously would confuse Respondent’s
offerings with the items for sale by Complainant. Since Respondent knew that the name “Gaia” was already in use,
his registration after finding out that fact leads to the conclusion that his
registration of the domain name <gaia.biz> was in bad faith.
DECISION:
The
Complainant having established all three elements required by the Start-up
Trademark Opposition Policy, it is concluded that the requested relief shall be
granted.
Accordingly, it is ordered that the
domain name, <gaia.biz> be transferred from Respondent to
Complainant. Further challenges against
this domain name shall not be permitted under the STOP Policy.
HON.H. CURTIS MEANOR
Panelist
DATED:
July 2, 2002
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