START-UP TRADEMARK OPPOSITION POLICY
Corrections Corporation of America v. Creative Curriculum Associates Co.
Claim Number: FA0204000112490
Complainant is Corrections Corporation of America, Nashville, TN (“Complainant”) represented by Brian S Childs. Respondent is Creative Curriculum Associates Co., Gladstone, OR (“Respondent”) represented by Mark Page.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cca.biz>, registered with Verisign - Network Solutions, 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.
Robert T. Pfeuffer, Senior District Judge 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 26, 2002.
On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 31, 2002.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed Robert T. Pfeuffer as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The Complainant has requested relief under STOP Rule 3(c)(ix) and Supp. Stop Rule 4(b). It is alleged that: A) The domain name is identical to a name under which the Complainant’s customers know them and under which they operate. B) That Respondent does not appear to be engaging in any material business activities and that no evidence exists that Respondent uses the name or initials “CCA”. Further, that no Federal records exist indicating a registration or claim by Respondent to the initials or trademark “CCA”. C) That Respondent has acted in bad faith in registering the domain name seeking to use <cca.biz>. That Respondent does not appear to be engaging in any material business activity and there is no evidence that Respondent uses the name or initials “CCA” and that the registration of the domain name by Respondent is primarily for the purpose of selling, renting or otherwise transferring the domain name registration for valuable consideration.
Respondent denies all the allegations in the Complaint and specifically states that the domain name <cca.biz> utilizes the acronym of Respondent’s corporate name Creative Curriculum Associates Company. Attached to its Response is Exhibit “A”, a specimen of Respondent’s letterhead showing the mark “CCA”. Respondent states that it provides services in connection with education curriculum, student/teacher assessment, consulting, education software and support services for school districts, higher education and other education agencies. It further states that it does not in any way compete with Complainant in the area where Complainant has a trademark registration. Respondent states that it does not work in the operation of correctional and detention facilities for others or the building, design and construction of correctional and detention facilities which is the apparent business operation of Complainant.
Respondent alleges that it has rights and a legitimate interest in respect to the domain name. It is a corporation organized under the laws of Oregon and has operated as such since March 12, 1996 pursuant to proper registry with the Oregon Secretary of State’s Business Registry. Respondent states it has used the initials CCA on its letterhead and is known as CCA by its customers. It has included as Exhibit “B” a sample of its letterhead.
Respondent points out that although it has not registered a trademark or service mark, nevertheless it is known to its customers as CCA and has continually used that name and mark since its incorporation in 1996. Also until the <cca.biz> name became available and subject to registration, it had no knowledge of any dispute regarding the “CCA” name and had never heard of Corrections Corporation of America.
The Response contends that the use of the domain name <cca.biz> is in connection with Respondent’s business of providing, servicing and selling its services to education systems. That its business is not in competition with Complainant’s business and that Respondent has used its corporate name and an acronym for its name with its customers. Numerous customers are named by way of example including the North Carolina Department of Public Instruction, Junior Achievement, Katabwa County Schools and Louisiana State University among others. Respondent further contends that it is a bona fide entity which has used its name and acronym of its name with its customers who are school districts, state school systems and other education agencies and does not believe that any of its customers have confused Respondent with the Complainant, Corrections Corporation of America. Respondent has furnished evidence of its ongoing business as set out in Exhibit “C” showing material business activities and sample business proposals. It further states that it does not believe anyone seeking contact with Corrections Corporation of America will be confused if they should encounter Creative Curriculum Associate Company’s website since the Respondent has nothing to do with correctional or detention facilities.
C. Additional Submissions
Neither Complainant nor Respondent have filed additional submissions for consideration by the Panel.
The Panel finds as follows:
1. That both Complainant and Respondent are bona fide business entities.
2. That Complainant is in the business of providing the operation of correctional and detention facilities for others and the building, design and construction of correctional and detention facilities.
3. That Complainant has used the acronym CCA in interstate commerce as early as 1990.
4. That it has also secured from the U.S. Patent and Trademark Office Registration Certificate Number 2253057 for use in connection with the mark CCA.
5. That Respondent is an Oregon corporation doing business since it was registered with the Oregon Secretary of State’s Business Registry on March 12, 1996 under Registry Number 505278-87. (See Exhibit “A” to Response.)
6. That Respondent has used its initials CCA on its letterhead and that it is known as CCA by its customers.
7. That Respondent is commonly known by its customers as CCA and has continually used that mark since its incorporation in 1996.
8. That at the time of registering the domain name <cca.biz>, Respondent had never heard of Corrections Corporation of America.
9. That Respondent is not in competition with Complainant and has no intention to use the domain name in competition with Complainant’s business.
10. That Respondent has a bona fide business interest in using the domain name <cca.biz> in its business of providing services and selling its services to education systems.
11. That Respondent does not anticipate that any of its customers have confused Respondent with Corrections Corporation of America nor that anyone seeking contact with Complainant would be confused with the business and services offered by Creative Curriculum Associate Company and Complainant’s business dealing with correctional or detention facilities.
12. That Respondent has not offered to sell, rent or otherwise transfer the domain name registration to Complainant and/or anyone else for valuable consideration.
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.
Domain Name Identical to Complainant’s Service Mark
It is undisputed that the marks are identical. The use of “.biz” in the disputed name is not a factor and shall be ignored by the panel in determining that the names are identical. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001 (finding that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted rights); see also Commercial Investors Realty v. Bank of New York, FA 103040 (Nat. Arb. Forum Feb. 18, 2002) (finding the Complainant’s THE INVESTOR’S CHOICE! mark to be identical to the <investorschoice.biz> domain name). See further the decision in Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002) (finding that <e-futures.com> and <efutures.com> were both identical to the mark UTURES, although ruling Complainant did not have rights in the mark on unrelated grounds).
Complainant’s and Respondent’s Rights or Legitimate Interests
Both Complainant and Respondent have established that each has rights and legitimate interests in respect to the domain name, which is the subject of this Complaint. Although unsupported by separate Exhibits, the statement made by Complainant that it has first used the mark “CCA” in interstate commerce as early as 1990 has not been challenged by Respondent. Complainant, on the other hand, has failed to discharge its burden by presenting competent evidence that Respondent has no rights or legitimate interests in respect to the domain name. Respondent has stated it has used “CCA” since it began business in 1996 and has supported its contention of use by Exhibits “A”, “B” and “C”. See K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate interests in the domain name <k2r.com> under UDRP ¶ 4(a)(ii) where he registered the domain name for a website in connection with his mother’s store, “KIRK ET ROSIE RICH”); see also Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent continuously operated a website at <americanway.com> for over five years in connection with the sale of its video series “The American Way of Training Hunters & Jumpers,” such activity satisfied the requirements of STOP Policy ¶ 4(c)(ii) in regard to the identical domain name <americanway.biz>).
Even where discussion of the actual sale of the domain name has taken place, bad faith is not necessarily found even under those circumstances. See LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling . . . the domain name to the Complainant”); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no bad faith where “the Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”).
The broad allegations made in the Complaint being unsubstantiated by competent evidence, some inference that the Complainant is engaging in reverse domain name hijacking is raised. The panel declines to make such finding against Complainant and does not find an attempt at reverse domain name hijacking under the circumstances of these facts.
The complaint is dismissed. Further challenges against this domain name under the STOP Policy shall not be permitted.
ROBERT T. PFEUFFER, Panelist
Dated: July 3, 2002
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