Freedom Communications Inc. v.
Northstar+Web+Marketing
Claim Number: FA0204000112494
PARTIES
Complainant
is Freedom Communications Inc.,
Irvine, CA (“Complainant”) represented by Glenn
Fuller. Respondent is Northstar Web Marketing, Anchorage, AK
(“Respondent”).
The
domain name at issue is <orangecounty.biz>,
registered with Intercosmos Media Group.
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 May 17, 2002.
On
June 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
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 July 10, 2002.
On July 18, 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.
A.
Complainant
Complainant
is a medium sized U.S. media company, headquartered in Orange County,
California.
Complainant’s
largest newspaper, the Orange County Register, is located in Orange County,
California. Complainant has owned this
paper since approximately 1950.
Complainant
is not aware that Respondent is the owner or beneficiary of a trade or service
mark identical to <orangecounty.biz>. Complainant is also not aware that
Respondent has been commonly known by the domain name, <orangecounty.biz>.
Complainant
is not aware of the reasons that Respondent would want to register the <orangecounty.biz> domain name,
however Complainant feels that it has filed the IP Claim in good faith and as
the actual words, Orange County, are on the masthead of Complainant’s
newspaper, Complainant feels that it is making an honest claim for <orangecounty.biz>, which
Complainant attempted to register in order to use it for business purposes
involving Complainant’s own company, and not in order to resell.
B.
Respondent
Respondent is a self-employed small businessperson, and
a web professional. Respondent develops
travel related sites. The current
project is a company Respondent co-founded in Alaska, which is doing $4,000,000
per year in travel related sales over the Internet. Respondent’s intended use of <orangecounty.biz> is along these
lines, and will have nothing to do with newspapers.
To
Respondent’s best knowledge the domain name <orangecounty.biz> is not identical or confusingly similar to
any trade or service mark held by the Complainant. Prior to submitting an application for this domain name,
Respondent made a good faith effort to insure that such a registration would
not violate the rights of any existing trade or service mark holders. Respondent searched state and federal
trademark and business databases for the term “orange county”, “orangecounty”
or “orangecounty.biz”. At no time did
Respondent come across Complainant.
Complainant
appears to have no more rights than thousands of other businesses Respondent
came across that use the words, “orange county” in their names.
Respondent
did not register the domain name in bad faith, nor has Complainant demonstrated
or even suggested that Respondent has done so.
1. Complainant is a corporation with
headquarters in Orange County, California.
2. Complainant owns the Orange County
Register, a newspaper located in Orange County, California.
3. Respondent is an individual living in
Anchorage, Alaska, who does business under the name, Northstar+Web+Marketing.
4. Respondent registered the domain name, <orangecounty.biz>, on March 27,
2002.
5. Complainant has failed to prove that it
has rights in the name, ORANGE COUNTY or ORANGECOUNTY.
6. Respondent has failed to prove that she
has rights or interests in the name, ORANGE COUNTY or ORANGECOUNTY.
7. No evidence has been presented to prove
that Respondent registered or used the domain name, <orangecounty.biz>, in bad faith.
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.
The
first requirement of a Complainant in a case of this type is to prove that the
domain name is identical to a trademark or service mark in which Complainant
has rights. see Paragraph 4(a) of the Start-up Trademark Opposition Policy. Thus, Complainant must prove that it has
a trademark or service mark that is identical to the domain name. Complainant
makes no effort to show that it holds any trademark or service mark of any
kind. Recent STOP Policy decisions
insist that a party produce “concrete evidence” of their rights. see PRL USA
Holdings, Inc. v. Search Hound, DBIZ2201-00010 (WIPO Feb. 13, 2002). That case accepted the reasoning set out in Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), which
stated “Concrete evidence constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means
other than mere bald assertions that it is the owner of registered marks, so
should the Panel require that a respondent come forward with
concrete
evidence that the assertions made in the response is true. Evidence in the form of documents or third
party declarations should be furnished in support of such assertions.” In this
case, Complainant does not even assert that it holds trademark or service mark registrations. Complainant does not contend that it
possesses common law trademark or service mark rights in any mark. It might be inferred that complainant has
some common law rights in the term “Orange County Register”, the name of its
newspaper. Even if true, that would give
no rights in the name “Orange County” standing alone. Respondent argues that
“Orange County” 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 Am. 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, FA96347 (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. Since Complainant presented no evidence of any kind to suggest
that it has rights in the name “Orange County”, and nothing can be found in the
pleadings of either party to indicate that Complainant has such rights, the
Complaint must be dismissed.
No decision is necessary under this point
because of the holding that Complainant fails to prove that it has rights in
the word, “Orange County.” It is noted,
however, that no evidence was presented by Complainant to show that Respondent
was without rights and interests in the domain name <orangecounty.biz>.
Respondent contends that “Orange County” is generic and no party has
rights or interests superior to another in the word. Therefore, Respondent has no rights or interests in the domain
name, <orangecounty.biz>
superior to any other party.
No decision is necessary under this
section.
DECISION
The Complaint of Freedom Communications,
Inc. is hereby DISSMISSED and the demand for transfer of the domain name, <orangecounty.biz> is DENIED. Further
challenges SHALL be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 1, 2002.
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