Simpson Investment Company v. Daks Simpson Group PLC
Claim Number: FA0204000112495
Complainant is Simpson Investment Company, Seattle, WA, USA (“Complainant”) represented by Kevin S. Costanza, of Seed Intellectual Property Law Group PLLC. Respondent is Daks Simpson Group PLC, London, UNITED KINGDOM (“Respondent”) represented by Anne Wong, of Carpmaels & Ransford.
The domain name at issue is <simpson.biz>, registered with Ascio Technologies, 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.
Alan L. Limbury 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 30, 2002.
On May 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 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”).
An untimely joint Response by both parties was received and determined to be complete on June 19, 2002.
On 22 July 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury as the single Panelist.
Having settled their dispute, the parties seek denial of the remedy sought by Complainant. Alternatively, transfer of the domain name from Respondent to Complainant. In either event, an order that no further challenges may be brought under the STOP procedures.
Complainant was founded in 1890 as the S. G. Simpson Company in Matlock, Washington, and has used the SIMPSON name and mark in connection with wood and paper products and services continuously since its founding. Complainant is the owner of valid and subsisting registrations for the trademark “SIMPSON” in more than 20 international jurisdictions, including the United States, Canada, Japan, Brazil and Germany.
The disputed domain name, <simpson.biz> uses the identical text string, “simpson”, which is a valid and subsisting registered trademark of Complainant.
In its Complaint, on information and belief, Complainant asserted that Respondent has no rights or legitimate interests in the disputed domain name and registered it in bad faith. In the joint Response (to which, despite its untimely filing, the Panel has regard pursuant to STOP Rule 10) Complainant stated that, for the purposes of this proceeding, it does not dispute that “Respondent has met its burden of showing legitimate rights” to the disputed domain name and “has met its burden of showing that it registered the domain name in good faith”.
Respondent or its predecessors in title have used the trade name and the mark SIMPSON in connection with the sale of clothing and other goods in the United Kingdom continuously since at least 1894 and subsequently in other countries. Respondent was formerly known as S. Simpson PLC and before that (between 1933 and 1986) as S. Simpson Ltd.
Respondent owns United Kingdom registered trademark 2212385 ALEC SIMPSON for clothing, footwear and headgear, issued April 2000. Respondent’s subsidiary Daks Limited (formerly Simpson (Piccadilly) Limited) is the registered proprietor of United States trademark SIMPSON PICCADILLY (stylized) issued 6 February 2001 and of U.K. registrations for the mark SIMPSON/simpson (stylized, series of two) for articles of clothing (issued 7 March 1997) and for the mark Simpson PICCADILLY in various classes, dating back to 1954.
Respondent applied to register the disputed domain name (and others, not presently relevant) with the intent of using it to promote sales of its products.
C. Both parties
Both Complainant and Respondent have presented sufficient evidence under the STOP procedures to show legitimate rights to a mark that is identical to the domain name at issue. Thus, no purpose would be served by permitting further challenges under the STOP procedure, because no challenger would be able to meet the burden of establishing that the Respondent lacked any rights in the domain name.
Respondent has established a legitimate interest in the disputed 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, properly brought, 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.
Under Rule 17(a), settlements between Complainants and Respondents shall be allowed only if the domain name registration has no other pending challenges. Here there is another pending challenge. Accordingly, despite Complainant’s concessions for the purposes of this proceeding and the parties’ common prayer for one or other of them to have both the domain name and the benefit of a decision under STOP paragraph 4(l)(ii)(1) or (2) that no subsequent challenges under the STOP shall be permitted, the Panel has examined the evidence carefully to ensure that the result does not unfairly disadvantage other pending challengers.
Complainant has rights in the trademark SIMPSON. The disputed domain name is identical to that mark. Complainant has established this element.
By exhibiting copies of the relevant trademark certificates and through the Declaration of Anne Wong, Respondent has clearly demonstrated that it has a legitimate interest in the name SIMPSON and thus the disputed domain name. Accordingly, Complainant has failed to discharge its burden of proving absence of rights or legitimate interests in the disputed domain name on the part of Respondent.
There is no evidence of bad faith on the part of Respondent. Complainant has failed to establish this element.
Pursuant to STOP Rule 4(l)(ii)(2) the Panel dismisses the Complaint and decides that no subsequent challenges under the STOP against the domain name <simpson.biz> shall be permitted.
Alan L. Limbury, Panelist
Dated: 26 July, 2002
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