AMR Corporation v. Hiran Costa Verges
Claim Number: FA0204000112519
Complainant is AMR Corporation, Dallas, TX, USA (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne-Sewell, LLP. Respondent is Mr. Hiran C Verges, Santiago Rm, CHILE (“Respondent”).
The domain name at issue is <amr.biz>, registered with Dotster.
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, Esq. 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 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 30, 2002.
On July 1, 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury Esq. as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The domain name is identical or confusingly similar to a service mark and trade name in which Complainant has rights. Complainant owns a service mark for “AMR and design” used in connection with business management consulting services in the aviation and transportation industries. “AMR” is also the trade name for Complainant. The service mark and trade name are collectively referred to as the “AMR mark”. Respondent’s domain name is <amr.biz>. Respondent’s domain name is certainly confusingly similar to Complainant’s AMR mark.
Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has acquired a nationwide reputation for quality goods and services and has accumulated substantial public goodwill. In the course of its business, Complainant has acquired extensive rights in numerous trade names, trademarks, and service marks, including the AMR mark. Complainant has continuously used the AMR mark since at least as early as 1990 in connection with business management consulting services in the aviation and transportation industries.
Upon information and belief, there is no evidence of Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent is not authorized to use Complainant’s AMR mark. Upon information and belief, Respondent (as an individual, business, or other organization) has never been commonly known by the domain name at issue and has no legitimate non-commercial or fair use of the domain name. Upon information and belief, the domain name at issue is not, nor could it be contended to be, the nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
The domain name was registered and is being used in bad faith. The domain name was registered or acquired for a primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site or other on-line locations.
Respondent was on notice as to the existence of Complainant's AMR mark when it registered <amr.biz>. Actual or constructive knowledge of a commonly known mark at the time of registration is evidence of bad faith.
In addition, the registration by Respondent of the domain name prevents Complainant, as owner of the AMR mark, from reflecting the mark in the domain name at issue.
Respondent’s continuing conduct trades on the value of, and interferes with, Complainant’s rights to use its mark in commerce.
By asserting that the domain name is confusingly similar to the AMR mark, Complainant concedes the mark is not identical to the domain name. The mark is not distinctive, being 3 common letters of the English alphabet and "AMR" has substantial third party use.
The domain name <amr.biz> was registered by Respondent in virtue of the significance of the acronym, which in Respondent's language (Spanish) stands for Acceso Multimedial Remoto, namely Remote Multimedia Access (in English). This project has taken over two years in preparation and is intended to serve as a portal that sells multimedia content to companies that use remote access technology to serve their customers with multimedia content.
Respondent denies registration or use in bad faith.
Reverse domain name hijacking
Complainant knew of the clear lack of Respondent’s bad faith registration and or use but nevertheless brought the Complaint in bad faith.
Complainant has not established all the elements required to entitle it to relief under the STOP.
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 requires Complainant to 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.
The STOP is concerned with trademarks and service marks as such, not with trade names. By applying the compendious description “the AMR mark” to both its service mark and its trade name, Complainant renders impenetrably obscure its claim to have “continuously used the AMR mark since at least as early as 1990 in connection with business management consulting services…”. In any event, Complainant provides no evidence to prove this claim, whatever it means.
Annex 1 to the Complaint is a copy of Complainant’s U.S. Service Mark Registration No. 1,850,845, registered August 23, 1994. The mark is a design incorporating the initials AMR superimposed on a depiction of a bird, most probably an eagle, in International Class 35 for business management consulting services in the aviation and transportation industries.
Complainant has established that it has rights in the AMR design mark.
Contrary to Respondent’s submission, Complainant asserted and did not concede absence of identity. However Complainant also claimed confusing similarity, a concept beyond the scope of the STOP.
This case raises the need to reconcile STOP paragraph 4(a)(i), which requires a Complainant to prove that the domain name is identical to Complainant’s mark, and STOP paragraph 1, which requires a Complainant, before filing its STOP Complaint, to file an IP Claim Form for a .biz domain name matching “the exact alphanumeric string contained in” the mark.
The reference to the exact alphanumeric string contained in the mark recognizes that trademarks and service marks commonly include design elements as well as alphanumeric ones and that there is no scope for domain names to do the same.
It is often said in these cases that:
“Under the STOP proceedings, a STOP Complaint may be filed only 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”.
This is not entirely accurate. A STOP Complaint may be filed only when the domain name in dispute is identical [save for the inconsequential .biz gTLD] to the exact alphanumeric string contained in the trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. The question whether the domain name is identical to the mark must be determined in the proceedings. Of course, the vast majority of marks are word marks and in those cases it is correct to say that the STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. Where a mark contains a design or logo in addition to an alphanumeric string, the Panel must decide whether the domain name is identical to the mark as a whole, taking the alphanumeric and design or logo elements into account.
In Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum), this Panelist said:
“… every STOP proceeding, properly brought, should necessarily involve a disputed domain name that (apart from the “.biz” gTLD, which must be disregarded) is strictly identical to a trademark or service mark in which a Complainant asserts rights” [emphasis added].
Given the design element of Complainant’s mark, it cannot be said the domain name is strictly identical to the AMR design mark. However, some .biz cases have found domain names to be identical to stylized and design marks: see for example SDMO Indus. v. Coldwell Banker Burnet, DBIZ2001-00016 (WIPO) (trademark and design showing the word “SDMO” and a logo with two bars and a stylized “S” near to its name. Finding: “This stylised element does however not influence the impression that the very trademark is SDMO”). The “strictly identical” test suggested in Commonwealth Bank v. Rauch may not be appropriate for design or logo mark cases.
Applying the traditional UDRP “virtual or substantial identity” test, a prominent feature of Complainant’s mark is the combination of letters AMR. However the eagle’s wings, body, head, tail and one talon, over which the letter M is superimposed but which protrude significantly above and beneath that letter, appear to the Panel to be an almost equally prominent part of the mark. Not without some hesitation and recognizing that views can differ on this issue, which is essentially one of personal judgment, the Panel finds the domain name is not identical to Complainant’s mark.
Complainant has not established this element of its case.
For the purpose of determining this Complaint it is unnecessary, having regard to the previous finding, to consider whether Complainant has demonstrated absence of rights or legitimate interests in the disputed domain name on the part of Respondent.
For the purpose of determining whether subsequent challenges may be made under the STOP against the disputed domain name, it is necessary to consider whether Respondent has demonstrated any such rights or interests. The Panel finds Respondent has not done so because Respondent has produced no evidence in support of his claim to having spent over 2 years in preparation for his Acceso Multimedial Remoto project.
It is unnecessary to determine this issue.
Reverse domain name hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(d). To prevail on such a claim, Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO, Oct. 31, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO) or that the Complaint was brought in knowing disregard of the likelihood that Respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO).
To that list of circumstances might be added that a Complainant was aware that the domain name was clearly not identical (nor, in UDRP cases, confusingly similar) to its mark and nevertheless brought the Complaint in bad faith.
Here the issue of identity has been a difficult one. In relation to that issue Complainant was unarguably entitled to file its IP claim form and its STOP Complaint. Respondent has not demonstrated rights or legitimate interests in the disputed domain name and it has been unnecessary to decide the issue of bad faith. Accordingly, none of the circumstances justifying a finding of reverse domain name hijacking has been established.
Pursuant to Paragraph 15(d) of the Rules, the Panel concludes that the dispute is not within the scope of the STOP. The Complaint is dismissed. Since Respondent has not demonstrated rights or interests in the disputed domain name, subsequent challenges under the STOP against the disputed domain name (i.e. other than by Complainant) shall be permitted.
Alan L. Limbury Esq., Panelist
Dated: July 11, 2002.
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