WebTime Ltd. v. KAIM CHIGH LLC
Claim Number: FA0204000112542
PARTIES
Complainant
is WebTime Ltd., Kecskemet, HUNGARY(“Complainant”)
represented by Laszlo Kocso. Respondent is KAIM CHIGH LLC, Golden, CO, USA (“Respondent”) represented by Vince.
The
domain name at issue is <webbusiness.biz>,
registered with Network Solutions 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.
Herman
D. Michels 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 28, 2002; the Forum
received a hard copy of the Complaint on April 28, 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 3, 2002.
Complainant
submitted a timely Additional Submission on June 7, 2002. Respondent submitted a timely Additional
Submission on June 11, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Herman D. Michels as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
contends that it is the owner of the trade/servicemark WebBusiness which was
registered by HPO (MSZH) in Classes 35 and 42 of the Nice Agreement concerning
the international classification of goods and services for the purposes of the
registration of marks on December 16, 1996.
Class 35 of the Nice classification is for advertising; business
administration; office functions. Class
42 is for providing of food and drink; temporary accommodations; medical,
hygienic and beauty care; veterinary and agricultural services; legal services;
scientific and industrial research; computer programming; services that cannot
be placed in other classes. Complainant
contends that WebBusiness is an international network of business to business
buyers and sellers and that its services allow access to wide international
markets of products and services.
Complainant contends that it intends to use the domain name WebBusiness
for the services described operating since 1998.
Complainant
further contends that WebBusiness is completely identical with a domain name
that is subject to the Complaint and that Respondent does not have any rights
or legitimate interests in respect to that domain name. Moreover, Complainant contends that
Respondent has not been commonly known by the domain name and has not acquired
trademark or servicemark rights for this domain name.
Finally,
Complainant contends that Respondent has registered or used the domain name in
bad faith, having registered the domain name primarily for selling, renting or
otherwise transferring the domain name registration.
B.
Respondent
Respondent
contends that the domain name WebBusiness is a combination of two generic terms
“ Web” and “Business”, which is not subject to protection by trademark due to
its generic nature. Respondent
further points out that Complainant admits that it does not possess an
international registered trademark, thereby limiting any exclusive rights which
the Complainant should possess to the jurisdiction of the registration.
Respondent
contends that Complainant’s claim with respect to the registration or use in
bad faith of the domain name are not supportable and are unsubstantiated, and
do not comply with Rule 4(b) of the Start-Up Trademark Opposition Policy.
Respondent
further contends that it has a long history of involvement in internet based
business, in particular the business of business assistance services and
business directories which it has provided.
These directory services include a strategic alliance and involvement in
the Our Hometown Project – for which Respondent is exclusively responsible for
maintaining the business database for over 20 cities in the Denver, Colorado
area and that it has provided this service
for two and one half years.
Specifically, Respondent claims that its customers and the community know
that it is and runs a “web business”.
Respondent
claims that it has maintained the directory service denoted by the service mark
“ Weblinks” available on the internet by following the link “Search our
WebLinks data base” which service has been available for five years. Respondent intends to utilize the domain
name <webbusiness.biz> to facilitate its provision of web‑related
business advisory services and the provision of indexes of web-related
businesses. Due to the timing of the
STOP claim, Respondent has thus far been denied the opportunity to utilize the
domain name since the claim was received approximately 20 days after receipt of
the approval of the registration of the
domain name.
C.
Additional Submissions
Complainant, in an additional submission, contends
that since its use is limited to Classes 35 and 42, it is not prohibited from
doing business with the domain name in other categories and, in fact, points
out that it has indicated that it did not care if Respondent wanted to do
business in some other industry with the domain name in dispute.
Complainant
emphasizes that it does possess a registered trademark for the string
“WebBusiness”, whereas Respondent does not possess any registered trademarks
nor patent services or products that would be at any rate directly related to
the string “WebBusiness”.
Complainant
also emphasizes that it uses a domain name for internet business content
service called WebBusiness which is a service running since 1997 in six
countries and seven languages and its customers and community identify it
through its name WebBusiness.
Finally
Complainant contends that it has not abused the Start-Up Trademark Opposition
Policy Procedures and that it has filed a Complaint based on genuine
intellectual property rights.
Respondent, by an additional response, contends
there is no basis to reverse the eligibility decision made by New Level in
regard to the IP claim submitted by Complainant.
Respondent
further contends that Complainant has recognized not only its right to the
domain name, but that Complainant’s statement implies a recognition of the
generic nature of the name in question and acknowledges the Complainant’s
ability to protect the name for use outside Complainant’s own jurisdiction. Respondent further contends that the domain
name is a generic phrase and is unprotectable.
Finally
Respondent contends that Complainant has failed to demonstrate bad faith and
has further failed to produce evidence establishing an exclusive right to the
use of the term, WebBusiness, on a global basis or within the United States and
that there is no possible basis on which to recommend a transfer of ownership
of the domain name.
The domain name at issue, <webbusiness.biz>,
is identical to the servicemark WebBusiness in which Complainant has
rights. Complainant’s WebBusiness
trade/servicemark was registered by HPO (MSZH) in Classes 35 and 42 of the Nice
Agreement Concerning the International Classification of Goods and Services for
the Purposes of Registration of Marks on December 16, 1996. The trademark number was 167220. Moreover,
Complainant has applied for the international trademark of the word,
WebBusiness, and the process has apparently started. Although the term, WebBusiness, is a combination of two generic
terms, “web” and “business”, Complainant has been using the name since 1998 in
connection with its businesses.
The WebBusiness is an international
network of business to business buyers and sellers that allows access to wide
international markets of products and services. Qualified business partners post offers to buy or sell which are
then sent immediately by e-mail to the registered subscribers who have
pre-selected those criteria that correspond to the specific offers. The Complainant plans in the future to use
the domain name for these services.
Respondent has not demonstrated that it
has any rights or interests in the domain name, <webbusiness.biz>. Respondent has not demonstrated that it is
the owner or beneficiary of a trademark or service mark that is identical to
the disputed domain name. Respondent’s
unsupported, self-serving allegations alone are insufficient to establish that
it has rights or legitimate interests in respect to the domain name at issue. The proofs, do not establish that Respondent
registered or used the domain name, <webbusiness.biz>, in bad
faith. See Twentieth Century Fox Film, Corp. v. Bernstein, FA
102862 (Nat. Arb. Forum, Feb. 27, 2002); see also Gene Logic, Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002).
In the circumstances here present the
registration of the domain name, <webbusiness.biz>, does not
constitute bad faith. There was no
proof in this record that Respondent registered the domain name primarily for
the purpose of selling, renting or otherwise transferring it to Complainant for
a valuable consideration in excess of Respondent’s out of pocket costs directly
related to the domain name or that Respondent registered the domain name for
the purpose of preventing Complainant from registering domain names that
reflect its mark or that Respondent registered the domain name primarily for
the purpose of disrupting the business of a competitor. Complainant’s unsupported charges are not
sufficient to establish that the domain name was registered or being used in
bad faith. Moreover, the term
WebBusiness is generic and there is no evidence that Respondent registered that
domain name with the intent of capitalizing on Complainant’s servicemark. See
Lumenas-kazo.o v. Express Ventures, Ltd., FA 94375 (Nat. Arb. Forum
May 11, 2000).
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
domain name <webbusiness.biz> is identical to the
trademark/servicemark in which Complainant has rights.
Respondent
does not have any rights or legitimate interests in the domain name <webbusiness.biz>.
Based on the record submitted, the domain
name, <webbusiness.biz> has not been registered or is being used
in bad faith.
DECISION
Accordingly, the Complaint in the above
entitled matter is hereby DISMISSED.
Subsequent challenges under the Start-Up Policy against this domain name
SHALL BE permitted.
Herman D. Michels, Panelist
Dated: July 8, 2002
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