Classicweb SL v. Navenetworks SL
Claim Number: FA0204000112501
PARTIES
Complainant
is Classicweb SL, Madrid, SPAIN
(“Complainant”) represented by Ian D
Webber. Respondent is Navenetworks SL, Bilbao, SPAIN
(“Respondent”) represented by Gorka Valencia.
The
domain name at issue is <dominios.biz>,
registered with Enom, 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.
David
S. Safran 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 6, 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”).
A
timely Response was received and determined to be complete on May 29, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum
appointed David S. Safran as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
has provided copies of trademark registrations showing the mark “dominios”
has been registered to Complainant in Morocco in class 38 on 24 April 1998, for
“communication services through the internet” and in Spain in class 25 on 5
February 2001, no. 2325983 for “clothing.” Complainant has also provided
evidence indicating that it owns and is using the domains
<dominios.net>,
<dominios.info> and <dominios.org> as well as that it has
conducted at least some advertising in which complainant is associated with the
domain <dominios.net>.
Complainant further alleges that the
<dominios.biz> domain name is identical to its DOMINIOS trademarks
and that the Respondent has not made any use of the domain <dominios.biz>
and has not commonly been known by this domain name. As evidence of bad
faith on the part of Respondent, Complainant alleges that, in response to an
inquiry from one of its employees Complainant was advised that it was to be
used “for a commercial project or else sell it if he was offered a good price,”
and that Respondent was unwilling to sell the domain name for what Complainant
considered a reasonable amount (600 euros).
B.
Respondent
Respondent
has presented substantial evidence to support its contention that the meaning of “dominios” is the same as that of the
word “domains” in English and that this term is descriptive when used with
respect to domain name registration services.
Respondent alleges that Complainant has pursued this Complaint in bad
faith after failing to be able to acquire the domain name at issue for a suitable price by failing to disclose the
meaning and generic nature of the “dominios” name and the fact that Complainant
had been denied a registration of the term “dominiosweb” (erroneously
identified as “dominiosnet” in the Response filed by Respondent and shown as
“dominiosweb” in the annex referred to by Respondent).
Respondent
alleges that it has rights
or legitimate interests in respect of the domain name because it has been a
domain reseller since November 2000 and has provided
evidence in support thereof. Respondent
also alleges and has provided evidence to indicate that it offers many Internet
services, from hosting to e-marketing.
Furthermore, it is alleged that in September 2001, it decided to create
a new firm which would focus on hosting and domains.
C.
Additional Submissions
No
submissions beyond the annexes referred to in the Complaint and Response have
been submitted.
The Panel finds that the term “dominios”
is Spanish for “domains” and is generically descriptive when applied to
Internet services including, inter alia, domain
name registration and domain hosting services, that term “dominios” and the
singular form thereof, “dominio” have been commonly used by numerous third
parties in connection with Internet services in accordance with its generic,
descriptive meaning, and that the Complainant was less than forthright about
information harmful to its claim having been aware of facts that bear a direct relation to
the dispute and having failed to include them in its Complaint in a manner
constituting an abuse of the administrative proceeding.
As a result, it is held that Complainant
has no protectable rights in the mark.
Respondent has no protectable rights in
the domain name since the since the domain name is a generic domain name and
Respondent has not demonstrated any identification of the domain name with itself by Internet users.
The registration by Respondent was not in
bad faith since the Respondent is a seller of generic domain names, the domain
name at issue involves a generic term and there is no direct evidence that
Respondent registered the domain name with the intent of capitalizing on
Complainant’s trademark interest.
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.
As
evidenced by the dictionary definition of the word “dominios,” third party use
of the term “dominios” and a decision of the Spanish Trademark Office, it is
unquestionable that the term “dominios” is descriptive when used in connection
the rendering of Internet services including, inter alia, domain name registration and domain hosting services
Furthermore, the Lanham Act, 15, U.S.C. § 1052(e) precludes registration of
marks that are descriptive of the goods with which the mark is used. Spanish Trademark law contains a similar
prohibition in Article 11.1.B and Complainant’s Spanish Trademark Application
2334338 for the comparable “dominiosweb.com” was refused by the Spanish
Trademark Office on that basis (see, Annex 24 of Respondent’s Response). Furthermore,
Complainant has not demonstrated any association of the mark by Internet users
with the Complainant, while the existence of third party usage provided
by Respondent suggests that such identification does not exists.
If
the Complainant has no rights in the mark, the Complaint must be dismissed. Fabric.com v. Song, FA 109701 (Nat. Arb.
Forum Oct. 26, 2002) (dismissing the Complaint because “fabric” is a generic
term in which no protectable rights were demonstrated); Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat.
Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant
did not hold a registered trademark in VVG, and (2) the Complainant did not
demonstrate sufficiently strong identification of its mark such that there
would be recognition among Internet users that the VVG mark identified goods or
services unique to the Complainant).
Since the domain name is a generic domain
name and Respondent has not demonstrated any identification of the domain name with itself by Internet
users, Respondent has no protectable rights in the domain name.
The registration by Respondent was not in
bad faith since the Respondent is a seller of generic domain names and the
domain name at issue involves a generic term, John Fairfax Publ'n. Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO
Dec. 13, 2000) (finding legitimate interests and no bad faith registration
where the Respondent is a seller of generic domain names). Furthermore, there is no direct evidence
that Respondent registered the domain name with the intent of capitalizing on
Complainant’s trademark interest; see
Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May
11, 2000) (finding no bad faith where the domain name involves a generic term
and there is no direct evidence that Respondent registered the domain name with
the intent of capitalizing on Complainant’s trademark interest).
Reverse Domain Name Hijacking
While
that Panel has found that Complainant was less than forthright about
information harmful to its claim having been aware of
facts that bear a direct relation to the dispute (meaning of the term
“dominios” and the rejection of its dominiosweb Spanish Trademark Application)
and having failed to include them in its Complaint in a manner constituting
an abuse of the administrative proceeding, since Respondent had not made a
claim of Reverse Domain Name Hijacking and since the Panel has found that
Complainant has failed to meet its burdens under Paragraph 4(a)(1) and (3) of
the STOP Policy to obtain an order that a domain name should be transferred,
the Panel finds that it need not decide whether Complainant has committed
Reverse Domain Name Hijacking.
DECISION
The Panel finds that the Complainant has
not satisfied the requirements of Paragraph 4 of the STOP policy, and
accordingly, orders that the domain name at issue, <dominios.biz> not be transferred to the Complainant. Pursuant to STOP Policy Paragraph
4(l)(ii)(3) subsequent challenges under this Policy shall be permitted.
David S. Safran Panelist
Dated: July 1, 2002
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page