AlaskaMLS.com
v. Anthony Smith Fine Art
Claim Number: FA0204000112498
PARTIES
Complainant is AlaskaMLS.com, Wasilla, AK, USA (“Complainant”) represented by Bruce A. Moore, of Winner & Associates, P.C.. Respondent is Anthony Smith Fine Art, Toorak, AUSTRALIA (“Respondent”) represented by Brooke Walker, of Baker & McKenzie.
The domain name at issue is <property.biz>, registered with 123 Registration, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil-Jiménez 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 27, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.
On May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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 June 5, 2002.
Complainant’s
Additional Submission was timely received and determined to be complete on June
12, 2002.
Respondent’s Additional Submission was received on June 18, 2002, i.e. after the deadline for submission, and thus it was determined not to be in compliance with STOP Supplemental Rule #7.
Complainant’s Additional Submission was received on June 25, 2002, and it was determined not to be in compliance with STOP Supplemental Rule #7.
Respondent’s Additional Submission was received on June 27, 2002, and it was determined not to be in compliance with STOP Supplemental Rule #7.
Complainant’s Additional Submission was received on July 1st, 2002, and it was determined not to be in compliance with STOP Supplemental Rule #7.
In
its discretion, in order to render a decision the Panel considered all
submissions sent by the parties.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed Luz Helena Villamil-Jiménez as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
A. Complainant
Complainant, Kevin S. Baker contends that “Property.Biz” is a registered service mark for “Dissemination of advertising for real estate for sale or lease and others via a global communication network and providing a directory of real estate web sites together with links to such sites”; he states that he owned this service mark since April, 2001, and that he also owns U.S. Service Mark application No. 78056783, both marks being identical to the domain name <property.biz>. Complainant contends as well that Respondent has no known rights to the service mark “Property.biz” or legitimate interests in this domain name. Prior to the registration the respondent did not submit any “Intellectual Property Claim” which he could have submitted if he were to have legitimate interest. Complainant contends that Respondent registered the domain in bad faith because he new the Complainant IP Claim and contact information prior to registering the domain name because Neulevel, through IP Conflict Notice, notified the Respondent prior to registering the domain name.
B. Respondent
Respondent, Anthony Smith Fine Art, filed a Response arguing that the domain name it registered is “property” which is not identical (or virtually identical) to the alpha- numeric string contained in the Complainant’s State of Alaska service mark registration for “PROPERTY.BIZ”. Respondent adds that a valid IP Claim could have only been made on the grounds of a trademark registration for PROPERTY but in turn, no trademark rights could be obtained for this word, it being a generic term available for use by any trader or person. Respondent argues that he uses the second level domain in his business as he trades in property, namely artworks and real estate, and adds that he has been making preparations to use the domain name because he is planning to launch a website using the internet address <property.biz>. Thus, neither the Respondent nor his business or organization are known by the <property.biz> domain name yet, since the website is still in the planning and design stages. Moreover, the Respondent argues that he cannot be known by the “property” domain name since this term is a commonplace and therefore generic word for things that can be owned. Lastly, the Respondent contends that the domain should not be considered as having been registered in bad faith because this registration was obtained with a view to using it as an internet address for a website relating to property transactions. The Respondent adds that there was no bad faith in proceeding with the registration of the domain after being notified of the Complainant’s IP Claim due to the fact that since the domain contained a generic word, it was inevitable that others would apply for the same domain name and therefore he could persevere with his application in the hope that he would be successful ahead of others. Moreover, he was unaware of the exact meaning and implication of the IP Claim, and since the Registrar issued a permission to proceed, he was lawfully entitled to proceed with registration.
C. Additional Submissions
Complainant
Complainant contends that he holds pre-existing valid rights to the identical service mark <property.biz> by virtue of this use of the mark in his business, his valid registration of that mark with the states of Alaska, Minnesota and Illinois and his pending application with the USPTO; Complainant argues that “property” can be protected by registration, that <property.biz>” is identical to “property.biz”, that the Respondent has no rights to <property.biz>.
Respondent contends that it is arguable that the service mark “property.biz” could be invalid under accepted legal tests for assessing the distinctiveness and registrability of descriptive marks, and cites certain precedents in cases where words were ruled to be generic and thus the claims were rejected. In addition, the Respondent assumes that the U.S. application for “property.biz” was objected to on the grounds that this mark does not qualify for registration either on the Principal or the Supplemental Register due to its generic condition, and submits the USPTO Examination Guide No. 2-99 of September 29, 1999 “MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES”. Lastly, the Respondent elaborates on the existing differences between the trademark “property.biz” and the domain name “property” since the TLD should be disregarded when considering whether a given domain name is identical to a trademark.
Complainant owns a registration for the service mark “Property.biz” in Alaska, it being in force from February 15, 2001 to February 15, 2006. Complainant also owns registrations for the service mark “Property.biz” in Minnesota and Illinois, and upon a review of the USPTO database it was found that the application for “Property.biz” appears to be abandoned, but a petition to revive has been filed. Complainant uses the trademark <property.biz> in his <laskamls.com>web site.
Respondent obtained registration of the domain name property.biz> on March 27, 2002.
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 has demonstrated that it has rights in the mark “Property.biz” through the registration thereof in Alaska, Minnesota and Illinois. Copies of the registrations were submitted as evidence, and it is worth noting that no disclaimer regarding the word “PROPERTY” is made in any of the registrations, which contradicts the Respondent’s argument as to the generic or descriptive condition of said word. The aforementioned service mark registrations are valid registrations, and they cannot unilaterally be deemed to be “invalid” since such a qualification should be obtained through an action seeking the cancellation or nullification thereof by a competent authority. Moreover, it should be noted that the Start-up Trademark Opposition Policy for .BIZ does not contain any specification as to the kind of trademark or service mark registration that is required in order to be able to submit a valid IP Claim, inasmuch as paragraph 4. (a) provides that the registrant of a domain name is “required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable Provider, in compliance with the rules, that (i) your domain name is identical to a trademark or service mark in which the Complainant has rights”; (…). In light of this, service mark registrations for “Property.biz” in Alaska, Minnesota and Illinois shall suffice to base on any of them a valid IP Claim.
As regards the
Respondent’s argument stating that the trademark “Property.biz” is not
identical to the domain name “property” (where the TLD .biz should be
disregarded in order to make the overall comparison), the Panel deems that it
is not sustainable to argue that the names are not identical. While the Respondent cites Examination Guide
No. 2-99 to support its argument that the mark PROPERTY.BIZ is a generic term,
it avoids taking into account the rule in the aforementioned Examination Guide
as to “adding or deleting TLDs in domain name marks” according to which:
“Generally, for domain name marks (e.g. COPPER.COM), the applicant may add or
delete a TLD to the drawing of the mark without materially altering the mark. A
mark that includes a TLD will be perceived by the public as a domain name,
while a mark without a TLD will not. However, the public recognizes that a TLD
is a universally used part of an Internet address. As a result, the essence
of a domain name mark is created by the second level domain name, not the TLD.
The commercial impression created by the second level domain name usually will
remain the same whether the TLD is present or not.” (Underlined by Panel).
This being the situation, it is a fact that the registered domain is identical
to the registered trademark since “.biz” is a secondary element of the mark.
See Commercial Investors Realty, Inc. v. Bank of New York 96356
(Nat. Arb. Forum Feb. 18, 2002) (finding
that the mark, THE INVESTOR'S CHOICE! is identical to the <investorschoice.biz> domain name
because the omission of "the" and the apostrophe is inconsequential
when determining whether or not a domain name is identical).
In light of the foregoing, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent bases his rights to use the domain <property.biz> on the fact that it is formed by a generic word that is available for use by anyone. It states, without proving it, that it uses the second level domain name in his business, as he trades in property, namely artworks and real estate. Furthermore, it argues that it has also been making preparations to use the domain name, but no evidence of any such activities was submitted. The Panel considers that should it be true that the Respondent “has an international presence already in the arts and with associates in all areas of “property” who are ready and willing to come on board”, it should have been able to demonstrate his usage of the name in his business, or alternatively his 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, or that he has been commonly known by the domain name even if he has acquired no trademark or service mark rights.
No such evidence was submitted by the Respondent with any of his submissions, and therefore the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied. See Commercial Investors Realty, Inc. v. Bank of New York 96356 (Nat. Arb. Forum Feb. 18, 2002) (finding that if Respondent were to use the disputed domain name it could not do so without creating an impression that it was associated with Complainant, because the <investorschoice.biz> domain name is identical to Complainant's THE INVESTOR'S CHOICE! mark. The intended use of a domain name identical to Complainant's mark to mislead or confuse Internet users is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)).
Respondent argues that he did not register the domain for any of the reasons or in any of the circumstances outlined in STOP Policy ¶ 4 [b.](i) to (iv), but rather registered it with a view to using it as an internet address for a website relating to property transactions. The Response adds that there was no bad faith in proceeding with the registration of the domain after being notified of the Complainant’s IP Claim because after applying for registration, the Respondent was notified by the Registrar of another claim to the domain name and, since the domain contains a generic word, he reasonably decided that it was inevitable that others would apply for the same domain name and that he could persevere with his application in the hope that he would be successful ahead of others. Moreover, it is argued that the Respondent was unaware of the exact meaning and implication of the IP Claim of the Complainant and that in view of the permission from the Registrar to proceed, the Respondent was lawfully entitled to proceed with registration.
The Panel deems that it is not easy
to ignore the exact meaning and implication of an IP Claim that warns a domain
name applicant that ““Property.Biz” is a registered Trademark in Alaska,
USA, with pending Federal Registration.
Any attempt to register
“property.biz” will be construed as bad faith.” A
trader that has been in business for over 25 years (as the Respondent states)
should be aware of the meaning of a warning regarding rights over a registered
trademark and, if acting in good faith, the least to do would be to seek
counsel as to the implications of going ahead with the registration of a domain
name whenever a notification of bad faith in seeking the registration was made.
Moreover, since the Start-up Trademark Opposition Policy is incorporated by
reference into the .BIZ registration agreement between the applicant and the
Registrar, the Respondent was made aware from the beginning of the fact that
the applicable disputes concerning the domain name could rise on the grounds of
a trademark or service mark in which a complainant has rights. The sole mention
of trademark or service mark rights in the IP Claim should have called the
applicant’s attention to a potential infringement, and therefore, the sole
belief that more claims could come up based on multiple applicants interested
in a generic domain name is not sufficient to demonstrate good faith in
insisting in the registration of the domain.
The Panel therefore finds that STOP Policy¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <property.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Luz Helena
Villamil-Jiménez, Panelist
Dated: July 8, 2002
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