DomainRegistry.com Inc. v. Internetters Limited
Claim Number: FA0204000112516
Complainant is DomainRegistry.com Inc., Bensalem, PA, USA (“Complainant”) represented by Mary Kay Ogden, of Andrew Grosso Esq. Respondent is Internetters Limited, Greenford Middlesex, UK (Great Britain) (“Respondent”) represented by Joanne Brook.
The domain name at issue is <domainregistry.biz>, registered with Internetters Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) 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 1, 2002.
On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Honorable Paul A. Dorf (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The Complainant contends that the domain name at issue is identical to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect to the domain name at issue; and that the Respondent registered the domain name at issue in bad faith.
The Respondent contends that the domain name at issue is not identical to Complainant’s trademark, as its trademark application has not been granted; that Respondent has rights or legitimate interests in the domain name at issue; and that the domain name at issue was not registered, and is not being used, in bad faith.
The Complainant began its business as a sole proprietorship in July, 1996 and was incorporated in the Commonwealth of Pennsylvania in April, 2000. The Complainant is engaged in the business of computer address management services, various web site services, consulting and management services on the commercial use of the internet, and providing information and access to services for the development and registration of trademarks through the internet and other computer networks.
In reviewing the exhibits presented by the Respondent, it appears that they claim to be an ICANN accredited registrar, including domain name registration, e-mail forwarding and web forwarding, and web site hosting.
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 Respondent has been using the "DomainRegistry" mark since 1996. It has applied for registration with the U.S. Patent and Trademark Office, and said application is currently pending. A user’s rights in a mark exists independent of any procedural benefit given by the United States Patent and Trademark Office when conferring a trademark registration. This being the case, the Complainant’s rights in the mark exist independent of any procedural benefit given by the United States Patent and Trademark Office when conferring a trademark registration. See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark).
The mark, when used in this instance, is a distinctive term rather than one that is generic. The Complainant conducts business as a registrar, not a registry.
The Respondent has not provided any evidence to show that it has used, or has made any preparations to use, the domain name at issue in connection with a bona fide offering of goods or services. The registration of the domain name at issue, which is identical to the Complainant’s common law mark, appears to be an attempt by the Respondent to capitalize on the Complainant’s goodwill by diverting customers to Respondent’s website. See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that Respondent’s intended use of the <peachtree.biz> domain name to provide information and services related to Complainant’s PEACHTREE product, but without Complainant’s authorization, would cause customer confusion and was not a bona fide offering of goods or services).
Additionally, the Respondent has not provided any evidence that it has been commonly known, either past or present, by the domain name at issue. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”) (emphasis in original). Indeed, while the burden is initially placed on the Complainant to show that a Respondent does not have rights or legitimate interests in a domain name, after such a showing is made, the burden then shifts to the Respondent “to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.” Gene Logic Inc., supra.
As the Respondent is an ICANN accredited registrar, it should have had available the published list of ICANN accredited registrars. Both Complainant and Respondent are direct competitors in a relatively narrow field. In one of its affidavits, the Respondent states they applied for several .biz domain names to reflect domain registration in the name, and admits that if allowed to retain the domain name at issue, will redirect internet traffic to its current website. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).
Additionally, the domain name appeared on the Respondent’s domain name resale site. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”)
Finally, internet users looking for the Complainant’s website would be redirected to the Respondent’s website, thereby creating a likelihood of confusion as to the source, affiliation and endorsement of Respondent’s website. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant)
Having established all three elements required under the Start-up Trademark Opposition Policy, this Panelist concludes that the relief shall be granted.
Therefore, it is Ordered that <DOMAINREGISTRY.BIZ> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Honorable Paul A. Dorf,
Dated: June 25, 2002
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