Pioneer v. dotpartners LLC
Claim Number: FA0204000112479
Complainant is Pioneer, Long Beach, CA (“Complainant”) represented by Robert J. Skousen, of Skousen & Skousen. Respondent is dotpartners LLC, Livingston, NJ (“Respondent”) represented by Ari Goldberger, of ESQwire Law Firm.
The domain name at issue is <premier.biz>, registered with TLDS Inc.
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”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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 29, 2002 Respondent requested that the deadline to file its Response be extended. The Forum granted Respondent’s extension request on May 29, extending the Response deadline to June 18, 2002.
A timely Response was received and determined to be complete on June 17, 2002.
A timely Additional Submission was received from Complainant on June 21, 2002. Respondent also submitted a timely Additional Submission on June 25, 2002.
The Panel considered all submissions. On July 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Karl V. Fink, (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is the owner of United States Trademark Number 1,697,381 for the mark PREMIER in International Class 009 for the following goods and services: Combination stereo radio tuner, audio cassette player with multi-compact disc controller (with or without built-in amplifier). Pioneer registered the PREMIER mark on the Principal Register of the United States Patent and Trademark office on June 30, 1992.
Complainant’s registered trademark is identical to Respondent’s registration of <premier.biz> because, with the exception of “.biz” the wording and lettering of Respondent’s PREMIER and Complainant’s registered PREMIER are the same.
Complainant was also recently granted registration of the <premier.info> domain name and is currently taking the necessary steps to trademark the use of that name.
Respondent has no legitimate interests in the domain name that is the subject of this Complaint because the Respondent is not the owner or beneficiary of a trade or service mark that is identical to the <premier.biz> domain name. An online trademark search of <uspto.gov> shows no pending or registered trademarks for use of the PREMIER mark by Respondent.
Respondent is not currently using the mark in commerce with any bona fide offering of goods or services. Respondent is not currently using <premier.biz> or a similar domain name in connection with a bona fide offering of goods and services. Respondent is not commonly known by use of the PREMIER mark.
Complainant’s PREMIER trademark has been registered since 1992 and has been in use in commerce by Complainant since 1989. Respondent either knew or should have known by use of ordinary care of Complainant’s registration and extensive world-wide use of the PREMIER trademark prior to Respondent’s registration of <premier.biz>. Respondent’s resulting registration of <premier.biz> was, therefore, completed in a bad faith attempt to prevent Pioneer from reflecting its registered trademark in a corresponding domain name and for the primary purpose of disrupting Complainant’s bona fide attempts to do business on the Internet.
There is no basis for transferring the disputed domain name <premier.biz> to Complainant. The Complaint is completely lacking of any evidence that Respondent lacks a legitimate interest in the Disputed Domain or that it registered the Disputed Domain in bad faith. The Disputed Domain incorporates the common word “premier”, and Respondent, a developer of web sites, uses it for a web site about movies with a search engine, links, information, news, advertisements, and products related to movies and entertainment. Respondent has already developed a Premier web site, which is currently hosted at <movies.lv>. Accordingly, Respondent clearly has a legitimate interest in the Disputed Domain. Moreover, premier is a very common word with substantial third party use and Complainant does not, and cannot, have exclusive rights to it.
There is no evidence of bad faith registration or use. Respondent had not heard of Complainant when the mark was registered, and mere constructive knowledge of a mark containing such a common word cannot create a presumption of bad faith.
Respondent is a web site development company that, together with its affiliated company, Boogie TV LLC (“Boogie TV”), operates a proprietary Internet web site directory and search engine under the brand name iBoogie™, powered by its own proprietary iBot search technology, for which it has applied for a United States patent.
Respondent intends to use the Disputed Domain for its “Premier” web site, a web site about movies with a search engine, links, information, news, advertisements, and products related to movies and entertainment. The web site is currently hosted at <movies.lv>, and will be hosted at the URL <premier.biz>, once this matter is resolved and the registry hold is removed from the domain name.
“Premier” is a common word meaning “the first to occur,” as is in something that is “performed for the first time.” “Premier” is a synonym for “premiere,” which specifically refers to the first public performance of a movie or play. The common word “premier” is subject to substantial third party use unaffiliated with Complainant.
Complainant has presented no evidence to support its claim that the Disputed Domain was registered in bad faith. Complainant makes the frivolous argument that Respondent’s unrelated trademark applications create a “strong likelihood of confusion” with Complainant’s sale of electronic products. Respondent is using the Disputed Domain in good faith for a site about movies and entertainment.
Respondent clearly has a legitimate interest in the Disputed Domain pursuant to paragraph 4(c)(iii). Respondent operates <Boogie.tv> and <iBoogie.com>, a search engine and web site network in which it has invested $1.7 million. Respondent will use the Disputed Domain for a web site about movies with a search engine, links, information, news, advertisements, and products related to movies and entertainment. The web site has been developed and is currently hosted at the URL <movie.lv> because the <premier.biz> URL is on hold due to this dispute.
Respondent has rights and a legitimate interest in the Disputed Domain because of its demonstrable preparations to use the Disputed Domain in connection with the bona fide offering of goods and services, namely a movie and entertainment web site in conjunction with its <Boogie.tv> web site network.
Complainant proffers no evidence to support this allegation of bad faith, essentially asking the Panel to presume bad faith because of the alleged fame of its mark. However, bad faith cannot be presumed under the STOP Policy when the disputed domain name incorporates a common word.
Complainant has failed to present any evidence to support bad faith registration or use on the part of Respondent – and because the credible evidence demonstrates that the Disputed Domain was registered in good faith – the Complaint must be denied.
This is a case of Reverse Domain Name Hijacking and the Panel should declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
C. Additional Submissions
Respondent is infringing upon Pioneer’s right to and use of the <premier.biz> domain name by offering many links to Pioneer and Pioneer Premier products under a web site entitled “Premier” and hosted at <movie.lv>.
Respondent misrepresented to this body that prior to the filing of Pioneer’s Complaint, it had no knowledge of Pioneer’s intellectual property rights in and to the Premier mark.
Pioneer has been unable to find evidence of any dotPartners’ presence on the Internet that uses the Premier mark in a legitimate manner.
On May 24, 2002, Respondent’s counsel informed counsel for Pioneer, Robert James Skousen, that dotPartners was interested in selling the <premier.biz> domain name to Pioneer for $10,000.00.
Pioneer complied with NeuLevel’s Intellectual Property (IP) Claim procedure by submitting a claim for trademark rights in and to the <premier.biz> domain name prior to the August 8, 2001 deadline. Concurrently therewith, Pioneer also submitted an application for registration of the <premier.biz> domain name. Under the “New Round-Robin Process” established by NeuLevel, Inc. for the registration of domain names when multiple parties submitted applications, Respondent was apparently selected as the registrant even though Pioneer had the superior intellectual property right to the domain name.
According to Step 3 of NeuLevel’s Round Robin Process, Respondent was notified of Pioneer’s IP Claim against <premier.biz>. Thus, prior to March 11, 2002, Respondent received notice from NeuLevel that Pioneer had submitted an IP Claim against the <premier.biz> domain name.
STOP requires only that the Complainant prove bad faith in the registration of the domain name with no requirement for bad faith use of the domain name. Respondent cannot establish that it has any rights under 4(c)(i) as it is not the owner or beneficiary of a trade or service mark identical to the <premier.biz> domain name. Respondent has yet to seek trademark or service mark protection for either the <premier.biz> domain name or any use associated with the Premier mark.
The specific nature of the STOP process required that Respondent specifically ratify its intent to register the web site after it was notified of Pioneer’s trademark rights in and to the <premier.biz> domain name. Respondent has no web site that is denominated as “Premier” site in connection with the sale of products related to movie premiers, as Respondent claims. There is no evidence that Respondent has taken any real steps to create a legitimate business to be used in connection with the <premier.biz> domain name.
Respondent, aside from unsupported assertions, has failed to provide sufficient proof of its alleged business venture.
Respondent has not presented any evidence that it is commonly known by the domain name Premier.
On May 24, 2002, Respondent’s counsel called counsel for Complainant after receiving an email from him on May 20, 2002 stating that he and his client were “interested in hearing any offers of settlement.” He advised that, while he would not ask my client to make an offer, he would recommend that his client accept $10,000 if offered that amount.
It is unreasonable that a company apparently so committed to developing its use of the <premier.biz> URL would immediately offer the domain name for sale if Respondent were truly intent upon hosting a web site.
Respondent is operating much more than a search for movies. Rather, many of the links that can be found at Respondent’s web site will link a user to a web site offering Pioneer Premier products for sale. There is no question that likelihood of confusion is great. Pioneer is a giant in the electronics and entertainment business. Respondent, by its own admission, is allegedly seeking to break in to the entertainment industry by introducing its <movie.lv> web site.
Respondent’s Additional Submission
Respondent submitted affidavits stating:
DotPartners, LLC is a web site development company that, together with its affiliated company, Boogie TV LLC (“Boogie TV”), operates a proprietary Internet web site directory and search engine under the brand name iBoogie™. Our main web site is located at Boogie tv, which provides advertisements and links to web sites across a wide range of entertainment categories including: movies, television, music, radio, sports and games. We have invested $1.7 million to develop our business. We intend to use premier.biz for our “Premier” web site, a web site about movies with a search engine, links, information, news, advertisements, and products related to movies and entertainment. The web site is currently hosted at movies.lv, and will be hosted at the URL premier.biz, once this matter is resolved and the registry hold is removed from the domain name.
For the reasons set forth below, the Panel finds Complainant has 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 is the owner of a U.S. trademark for the mark “Premier” and continues to use the mark in commerce. The disputed domain name is identical to that mark in which the Complainant has rights.
Respondent does not dispute this claim.
Complainant has proven this element.
In order to show rights or legitimate interests in a disputed domain name, the Respondent must establish with valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict. America Online, Inc. v. Prince, FA 110800 (Nat. Arb. Forum, June 6, 2002). Respondent has not offered such evidence.
There is no evidence Respondent or any business affiliated with Respondent is commonly known as premier or <premier.biz>. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant has proven this element. Respondent has no rights or legitimate interest in the domain name.
Respondent was on notice of Complainant’s rights in <premier.biz> when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith. See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002).
See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Complainant has proven this element.
Complainant has proven each of the required elements. Therefore, it is ordered that the domain name <premier.biz>, be transferred to Complainant. Subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Judge Karl V. Fink (Ret.)
Dated: August 12, 2002
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