Dear!Net Online E.K. v. N/A
Claim Number: FA0204000112544
Complainants are Deepak Rajani a/k/a Dear!Net Online e.k., Berlin, GERMANY (“Complainants”). Respondent is N/A, Australia (“Respondent”).
The domain name at issue is <pre.biz>, registered with Blueberry Hill Communications, 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.
Judge Irving H. Perluss (Retired) is the Panelist.
Complainants have 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 IP Claimants, Complainants timely noted their intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainants submitted a Complaint to the Forum electronically on April 28, 2002; the Forum received a hard copy of the Complaint on May 10, 2002.
On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 21, 2002.
On June 4, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.
Transfer of the domain name from Respondent to Complainants.
1. The Complainants in this proceedings are Dear!Net Online e.k., a legal entity, which is active, registered and practicing under the laws of Germany, having its principal place of business in Germany (Anexx 01), and Deepak Rajani.
2. Complainants’ business activities involved setting up a directory of A to Z known as “The Global website A to Z directory,” and e-mail services. Complainants chose the trademark PRE, which was an abbreviation of Public Relations Europe.
3. Different domains were offered to the users of the directory who are able to choose an e-mail of their choice from the listed domains (in their subscription area) which offered specialized newsletters in a specific field. One of the domains is <Pre.Net> which is active and continues to render services to their users.
4. Since 2000, Complainants have used the “PRE” mark extensively on the Internet in its business of Internet domain name e-mail services of <Pre.Net>. The mark is, as a result, known to the public and has become a very valuable asset of the company as it contains only three letters, is short and easy to remember.
5. Thus, Complainants claim legitimate trademark rights in the word “PRE” due to its use on the website <Pre.Net> and also due to the application of a trademark with the community trademark office at OHIM for the wordmark “PRE” applied on 09/09/99. The registration procedure is finished including the opposition and publication periods, i.e., Nov. 2001 until Jan. 2002, and Complainants are waiting for the trademark to be in full effect and force within Europe, which could be within one to three months.
6. Respondent owns a company named “Mj Central PTY LTD” which is a website development company and offers initially a free service on the URL and registers and develops websites for the potential future clients. The Respondent is a professional who works on a contract basis, earning fees by rendering services of web design together with registration and transfer of domain names.
7. The domain name is identical to the Complainants’ trademark “PRE,” and Respondent has no rights or legitimate interests in the disputed domain name and it was registered in bad faith.
8. Complainants further assert that the Respondent’s own name and his company’s name bear no relationship to the disputed domain name. Respondent has never traded under the name “PRE” or any similar name, or does he intend to do so.
9. Respondent registered the disputed domain name to create a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Further, the Complainants charge that any use of the name will inevitably be associated with the Complainants’ business activities undertaken now and also in the future and this must have been known to or at least foreseen by the Respondent.
10. It can be inferred that Respondent will seek a very high price for the disputed domain name, together with web design.
1. Complainants have not conclusively proved the ownership of a trademark. Complainants state that they are “waiting for the registration certificate to be handed over. . .”, but they do not have it and do not even know if and when it will arrive. Complainants have merely demonstrated an application for and a confirmation that there is no opposition to the trademark. This is not proof that the Complainants presently have rights in any trademark or service mark.
2. Respondent does have rights and a legitimate interest with respect to the disputed domain name <pre.biz>. The domain name <pre.biz> is to be used to market Respondent’s services, using the word “pre” in a number of different industries involving pre-paying, e.g., mobile phones. Pre-paying is a business technique used to increase cash flow, tie the customer in and offer discounts to increase sales – all of which Respondent uses with his clients. Respondent works with organizations and businesses to assess and increase the efficiency of existing processes, focusing on marketing. Respondent also works to leverage relationships between businesses by trading goods and services, i.e., no cash transactions and do some business systemization – leveraging internal systems to maximize profitability. As part of Respondent’s on-line marketing plan to target a large number of different industries to offer his services, he has registered 74 generic/dictionary/acronym <.biz> domain names.
3. Respondent will transfer two domain names he is not planning to use at no profit and the remaining 72 <.biz> names Respondent is using fall into categories of generic and dictionary words and targeted acronyms, which allows Respondent specifically to target a great number of industries to offer his services. Therefore, the registration of <pre.biz> is for a bona fide offering of Respondent’s services and he has a legitimate interest in the disputed domain name <pre.biz>.
4. Respondent’s involvement as a director of MJ Central has nothing to do with the registration of <pre.biz> and the other <.biz’s> he registered. He personally registered them as an individual, separate from any other legal entities for use for an entirely different business and, therefore, all references to MJ Central in the Complaint are irrelevant.
5. Respondent is not in competition with Complainants, with respect to goods, services, information and advice, or any other areas. His use of <pre.biz> is not intended to confuse the public. Respondent has no (and never did) desire or intent to imply in any manner that the Complainants have approved, endorsed, or sponsored his website at <pre.biz>. He has little interest in the free e-mail industry and he had never even heard of the Complainants until this STOP case. Complainants have no presence that he knows of in Australia (where Respondent has lived all his life) and he had never seen or heard of them before this STOP case. In fact, the top level <pre.com> is not owned or used by the Complainants.
6. The disputed domain name is for use for Respondent’s business purposes and is not for sale. The registration of <pre.biz> is totally separate from the activities of MJ Central and he will not be giving up or selling any of his personally registered domain names (i.e., all of the <.biz’s> he registered) for the purpose of selling them with a website.
7. Respondent has no intention to and will not cause the Complainants any damage at any time. He is not in any sort of competition with Complainants, nor does he have any desire to be. The public that is aware of the Complainants’ presence will not try to get the Complainants’ website by typing in <pre.biz>. According to the Complaint, Complainants are known as <pre.net> and that is how the public will arrive at their site. Complainants also make no mention of <pre.com> or <pre.org>, neither of which they own and, obviously, neither of which are causing the Complainants damage as the public knows not to type those addresses into their Internet browsers to get to the Complainants’ website.
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.
STOP Policy ¶4(a)(i)
The evidence is sufficient to establish that the Complainants have made an application to register its mark, and that they have used the domain name <pre.net>since the year 2000. Accordingly, the Panel finds that Complainants do have rights to the mark. The Panel further finds and concludes that Complainants’ mark and the disputed domain name are identical.
STOP Policy ¶4(a)(ii)
STOP Policy ¶4(c) functions similarly to UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or legitimate interests in a domain name.
Under STOP Policy ¶4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Respondent has submitted no evidence to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panel finds and concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent contends that he has gone as far as he could in light of the STOP process in preparing to use the disputed domain name in advising clients how to increase sales.
The Panel finds and concludes that this assertion by Respondent is not sufficient.
STOP Policy ¶4(a)(iii)
Finally, we turn to the bad faith requirement of STOP Policy ¶4(a)(iii).
STOP Policy ¶4(b) provides four examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy ¶4(a)(iii). Paragraph 4(b) makes clear that these are not the exclusive determinants of bad faith.
To prove bad faith under the STOP Policy, a Complainant only need prove either registration or use of the domain name in bad faith, not both as the UDRP requires. STOP Policy ¶4(b) is otherwise similar to UDRP ¶4(b).
STOP claims differ from UDRP claims in one very significant and fundamental way. Unlike the UDRP, under STOP when a registrant (Respondent) registers a domain name for which an IP Claim was previously filed, the registrant is notified of the potential for trademark infringement before being allowed to proceed with the registration. One Panel has recognized that registration of a domain name despite such notice, in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name. . . .” Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding bad faith where Respondent registered the <genelogic.biz> domain name “with full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).
First, however, there is no evidence that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name to Complainant or its competitor for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name which is the bad faith requirement of STOP Policy ¶4(b)(i). The Panel so finds and concludes.
It is of interest to note that it has been held that, where a domain name is generic, as here, even an offer for sale by Respondent will not establish bad faith. See John Fairfax Publ’n. Pty Ltd v. Domain Names 4U, D2000-1043 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the Respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain 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).
Under UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark(s), provided Respondent has engaged in a pattern of such conduct. Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove bad faith by showing the Respondent registered the domain name for the purpose or preventing Complainant from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of conduct requirement. Thus, Panels have inferred bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at issue and no prior history of trademark infringement was established. See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent’s knowledge of Complainant’s mark and Respondent’s lack of rights or interests in the mark).
But here, secondly, there is no evidence of such conduct by Respondent, either by pattern or otherwise. The Panel so finds and concludes.
STOP Policy ¶4(b)(iii) is nearly identical to ¶4(b)(iii) of the UDRP. It states that bad faith is established when a Respondent registers a domain name “primarily for the purpose of disrupting the business of a competitor.”
While the word “competitor” has often been broadly interpreted under both the STOP Policy and the UDRP to encompass claims by entities that might not traditionally be viewed as competing, (see Tufts Univ. v. Creation Research, FA 102787 (Nat. Arb. Forum Jan. 18, 2002) (finding bad faith under STOP Policy ¶4(b)(iii) where Complainant was a university and Respondent was a research company); see also Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” under the UDRP as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”)), literally and figuratively, the Complainants and Respondent are at least half a world apart engaging in completely different activities.
Thus, thirdly, here, this aspect of “bad faith” has not been established. The Panel so finds and concludes.
STOP Policy ¶4(b)(iv) is also essentially identical to ¶4(b)(iv) of the UDRP. It states that bad faith is established when a Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation., or endorsement of the website or location or of a product or service on the website or location.
Fourthly, Complainants make this assertion, but have failed to prove it. Thus, the Panel simply cannot find and conclude that Respondent acted in bad faith. To the contrary, the Panel finds and concludes that Respondent registered the disputed domain name in good faith.
Based on the above findings and conclusions, the Complaint herein is dismissed. Subsequent challenges under the STOP Policy against the subject domain name shall be permitted.
JUDGE IRVING H. PERLUSS
Dated: June 12, 2002
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