Claim Number: FA0204000112496
Complainant is Shaw Fiberlink Ltd., Calgary, A.B., CANADA (“Complainant”)
represented by Margot Micallef, Q.C. Respondent
is Kenneth Cole, Princeton, WV, USA
(“Respondent”) “represented by” Zane Lawhorn.*
The domain name at issue is <fiberlink.biz>, registered with Tucows, 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.
M.
KELLY TILLERY, ESQUIRE,
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 2, 2002.
On May 13, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 3, 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 28, 2002.
On June 20, 2002,
pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
Complainant contends that it owns the
trademark “FIBERLINK” registered in Canada under No. 429,502 since June 24,
1994 in association with the following services: “Communications and Telecommunications Services, namely the
design, construction, implementation and operation of video and isochronous
digital service links utilizing fiber optic and coaxial systems and networks.”
Complainant contends that the trademark
has been duly used in Canada since its registration by Complainant and/or its
licensees.
Complainant contends that the domain name
is clearly identical to its trademark and Respondent has no rights or
legitimate interests in the domain name since it has no registered trademark
and has not applied for a registration with the U.S. Patent and Trademark
Office.
Complainant contends that it has not been
able to identify any use of the trademark by Respondent.
Complainant contends that the domain name
should be considered as having been registered or being used in bad faith since
there is no evidence of Respondent’s current or planned use of the domain name
and Complainant contacted Respondent on April 24, 2002 asking for clarification
of Respondent’s rights in this regard and Respondent neglected or refused to
provide particulars of his use and/or registration of the trademark.
Complainant contends that there is no
apparent link between the domain name and Respondent’s current or planned
business or personal activities.
Complainant contends that Respondent is
associated with <webincubator.biz> which is also located at the same
physical address given for Respondent and further that it is apparent from
their website that part of the business of Web Incubator is to procure and sell
the rights of domain names.
Complainant contends that the domain in
question would have significant value to anyone in the telecommunications
industry and it appears that Respondent has registered the domain name
primarily for the purpose of selling, renting or otherwise transferring the
domain name to Complainant or a competitor of Complainant for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related to the domain name.
B. Respondent
Respondent claims that it has been in the
internet service business since 1999 providing dial up internet service through
a joint venture with Tosurfthe.net and Kanawhavalley Internet and its business
involves e-mail services, web-hosting and servicing the needs of its clients
with high-speed connections.
Respondent contends that it offers a
diversity of services and the use of the term “FIBERLINK” is an integral part
of the services.
Respondent acknowledges that it does not
have a federal or state registration for its “FIBERLINK” trademark but claims
that it has trademark rights in it since it is used in connection with the
services offered by Respondent.
Respondent claims that it is its business
plan to continue offering the services related to the term “FIBERLINK” to an
additional client base in the state of West Virginia and therefore has a
legitimate interest in the use of the domain name.
Respondent contends that it has no plans
to offer internet access service outside the U.S. national borders and
therefore its activity should not disrupt any activity of the Complainant in
Canada.
Respondent contends that Complainant does
not own or operate <fiberlink.com>, <fiberlink.tv>,
<fiberlink.us> which are owned by other parties. In addition, Respondent contends that
<fiberlink.org> is available to others for registration.
Respondent contends that Complainant is
wrong in its assumption that <webincubator.biz> sells domain names. On the contrary, Respondent contends that it
merely buys domain names.
Respondent contends that it submitted for
registration the domain name in question to be used in its business and it was
not registered for purpose of selling, renting or otherwise transferring the
name to others. Respondent contends
that it uses the term Fiberlink in connection with his business and therefore
its registration is not in bad faith.
It further contends that absence of evidence regarding its current or
planned use is due to the fact that these are “confidential internal affairs of
its business.”
Respondent contends that it had no prior
knowledge of the Complainant before filing for its domain name.
Respondent contends that Complainant has
not provided any evidence of Respondent’s lack of interest nor that the
registration was in bad faith.
1)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that the domain name in question is identical to a
trademark or service mark in which
Complainant has rights.
2)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that Respondent has no rights or legitimate interests in
respect to the domain name.
3)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that the domain name has been registered or is being used
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 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 Complainant has
rights; and
(2) 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.
Respondent does not dispute that Complainant owns the
trademark “FIBERLINK” registered in Canada and in use since at least June 24,
1994 in association with a variety of communication services. Thus, Complainant clearly meets the first
requirement of STOP Policy 4(a) that the domain name in question is identical
to a trademark or service mark in which Complainant has rights. STOP Policy 4(a)(i).
Respondent contends
that it is the owner of a Trademark in the United States in the word
“FIBERLINK” which is identical to the domain name in question. Although it acknowledges that it does not
have a Federal or State Registration for said Trademark, it contends that it
has used same in connection with its internet services at least in West
Virginia since 1999. Unfortunately,
Respondent has presented no evidence whatsoever to support its claim that it has actually used the word mark
“FIBERLINK” as a trademark or service mark in connection with the sale of any
goods or services in the United States or anywhere else. The only Exhibit attached to Respondent’s
Response which might have included
same is Exhibit 4 a “copy of one of our websites offering internet services in
West Virginia”. That document does not
anywhere include the word “FIBERLINK”.
Under these circumstances, it is impossible for this Panel to find that
Respondent owns a trademark or service mark that is identical to the domain
name in question. Likewise, this Panel
is unable to find that before any notice to the Respondent of the dispute, its
used, or made demonstrable preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of
goods or services. STOP Policy
4(c)(ii).
Finally,
there is no evidence of Record that Respondent has been commonly known by the
domain name, even though it has acquired no trademark or service mark
rights.
Under these circumstances, based upon the
entire record, this Panel must conclude that Complainant has met its burden to
prove by a preponderance of the relevant admissible and credible evidence that
Respondent has no rights or legitimate interests in this domain name. STOP Policy 4(a)(ii).
Since
the Record does not include any evidence, other than Respondent’s claims, of
actual use, the second element of STOP Policy 4(a)(iii) is inapplicable for if
there is no evidence of use, there can be no evidence of use in bad faith. Thus, the only remaining question is whether
the domain name has been registered in bad faith. Respondent does not disavow its connection with the website
<webincubator.biz> nor does it deny that said website buys domain
names. Respondent merely denies that
<webincubator.biz> sells domain names.
Considering
(a) lack of evidence of use of the word mark “FIBERLINK” in connection with any
business activities of Respondent, (b) the admitted association of Respondent
with the website <webincubator.biz> which is located at the same physical
address given for Respondent and (c) that Respondent’s claim that it buys but
does not sell domain names, which is illogical and not credible, this Panel is
compelled to find that the domain name in question has in fact been registered
in bad faith and therefore Complainant has met its burden to prove by a
preponderance of the credible, relevant and admissible evidence that the domain
name in question has been registered in bad faith.
Complainant’s request for relief is granted. The domain name <fiberlink.biz>
shall be transferred from Respondent to Complainant. Further challenges against this domain name
under the STOP Policy shall not be permitted.
M. KELLY TILLERY, ESQUIRE, Panelist
Philadelphia, PA
Dated: July 2, 2002
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* Respondent’s Response does not indicate that Zane Lawhorn is an attorney, but only an “Authorized Representative.”