START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Peter Proctor v. Bank

Claim Number: FA0204000112541

 

PARTIES

Complainant is Peter H. Proctor, Houston, TX, USA (“Complainant”).  Respondent is Bank, Richmond Hill, ON, CANADA (“Respondent”).

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <drugs.biz>, registered with Namescout.com.

 

 

PANEL

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.

 

R. Glen Ayers served as Panelist.

 

 

PROCEDURAL HISTORY

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 28, 2002; the Forum received a hard copy of the Complaint on May 22, 2002.

 

On May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 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 10, 2002.

 

On July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed R. Glen Ayers, as the single Panelist.

 

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

 

PARTIES’ CONTENTIONS

A.        Complainant

Complainant has apparently been able to register “DRUGSCOM” as a service mark.

 

He asserts common law marks in “drug” and “drugs.”  He asserts that the domain name <drugs.biz> is “confusingly identical” to his service mark.

 

He asserts that Respondent has no rights or interests in <drugs.biz>, because the Respondent is not the owner or beneficiary of any similar trade or service mark, has not offered goods or services under the name, and is not commonly known by the name.

 

As to bad faith, Complainant asserts that registration “in the face of the complainants [sic] filing of a STOP action” is evidence of bad faith.

 

 

B.         Respondent

Respondent first notes that the mark and the domain name are not identical - “drugscom” and <drugs.biz> “cannot be confused...by any reasoning and intelligent individual...”

 

Respondent denies that he has no rights in the name.  He asserts he has made no use of the domain name because it was only recently registered.

 

Respondent denies any bad faith.  He denies any interest in the Complainant’s hair loss treatment business.

 

 

FINDINGS

This is a clear cause of “reverse domain hijackings” but Respondent did not make any request for relief under STOP Rule 15.

 

First, “drugscom” and <drugs.biz> are not identical.  Second, no one has a common law trademark in “drugs” - - and Complainant has shown absolutely no evidence that he has such a common law trade or service mark right.  “Drug” and “drugs” are simply words in the English language.  “Drug” is no more subject to common law mark claim than is the word “dirt.”  Common law marks arise when use of a word or phrase creates a secondary meaning which identifies the source of a particular service or good.

 

Complainant offered no evidence of bad faith.  Complainant ignores the simple fact that Respondent has rights in <drugs.biz> by being the successful applicant for the domain name.

 

 

DISCUSSION

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

 

(1)        the Respondent has no rights or legitimate interests in respect of the domain name; and

 

(2)        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’s Rights in the Mark

While Complainant has rights in his mark, “drugscom”, he has no rights in the phrase <drugs.biz> - - and the two are not identical.  Complainant has no rights in any alleged common law mark, “drug” or “drugs.”  Further, while Complainant has read same case law, he does not understand the issues.  While “addition” of generic words to marks, or addition of “.com” and “.biz,” do not destroy either identity or similarity, here the addition of “.biz” to a generic word does nothing to offend the rights of others who wish to use the same generic word.  Where service words are involved, first to register wins.  See CRS Technology Corp. v. CondeNet Inc., FA 935047 (Nat. Arb. Forum, May 28, 2000).

 

 

Respondent’s Rights or Legitimate Interests

Respondent’s rights exist because he was the successful registrant.

 

 

Registration or Use in Bad Faith

No evidence of bad faith exists.

 

DECISION

The complaint is dismissed.

 

Subsequent challenges under the STOP Policy against this domain name shall be permitted.

 

 

 

 

R. GLEN AYERS, Panelist

Dated:  July 17, 2002

 

 

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