START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Hunter Engineering Company v. Ross LeBel

Claim Number: FA0204000112546

 

PARTIES

Complainant is Hunter Engineering Company, St. Louis, MO, (“Complainant”) represented by Nelson D Nolte, of Polster Lieder Woodruff & Lucchesi LC.  Respondent is Ross LeBel, Blaine, WA, (“Respondent”) represented by Stephen L. Anderson, of Anderson & Shippey.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hunter.biz>, registered with Gal Communications Ltd.

 

The Case Ticket Number is 13167pFW5r.

 

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.

 

Edward C. Chiasson, Q.C. 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 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 21, 2002.

 

A timely Additional Submission from Complainant was received and determined to be complete on May 28, 2002.

 

On June 4, 2002, pursuant to STOP Rule 6(b), the Forum appointed Edward C. Chiasson Q.C.as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

BACKGROUND

 

The following information is derived from the Complainant.

 

The Complainant owns the following U.S. registered and incontestable trademarks incorporating or consisting of the term HUNTER:

 

 

The Complainant owns the U.S. common law trademark rights in the mark HUNTER acquired by Complainant at least as early as September,1947.

 

The Complainant owns the U.S. common law trademark rights in the mark and domain name <hunter.com> acquired by the Complainant on September 13, 1995.

 

The Complainant owns international registered trademark protection of the mark HUNTER in the following countries: Argentina, Australia, Benelux, Brazil, Canada, Chile, China, Denmark, France, Germany, Honduras, Italy, Japan, Mexico, Saudi Arabia, Sweden, Taiwan, Thailand, United Kingdom and Venezuela.

 

An examination of the trademark registrations shows that they relate to engineering.

 

After a reasonable inquiry, the Complainant did not find any registered right that the Respondent has in the mark HUNTER.

 

Before any notice to the Respondent of the present dispute, the Respondent had neither used nor made demonstrable preparations to use the subject domain name or a name corresponding to it in connection with a bona fide offering of goods or services.

 

The Respondent has not been known commonly by the mark HUNTER or the subject domain name.

 

The Respondent does not reside at the address shown in the WHOIS information database.

 

The Respondent is in the business of buying and selling domain names and plans no legitimate use of the subject domain name.

 

The Respondent is involved in other internet-based business ventures.

 

The following information is derived from the Response.

 

In May of 1996, the Respondent filed a declaration for sole proprietorship in the name of CyberVision Network as an Internet Service Provider.

CyberVision Network is a business that offers Internet services, including, without limitation, web hosting services for others on shared servers and dedicated servers, domain name registrations, Internet connections, Internet and Intranet solutions, networks and networking services, and sales and marketing services.  CyberVision Network also offers website development services for others, and offers support for such features as RealAudio/Video, Java Chat, POP3 email, FTP, Telnet, Majordomo List server, MySQL Database, Bulletin Boards, CGI Scripts, Perl scripts, SSL certificates and other e-commerce services.

The Respondent has applied for the subject domain name with the intent of creating an Internet search engine specifically tailored to promote the services of himself and other Internet Service Providers (ISPs) in the United States and Canada. Using the Respondent's proposed search engine and doorway pages, consumers can locate ISPs and compare their respective product characteristics, prices and customer satisfaction.

 

Prior to receiving the Complaint in this proceeding, the Respondent had never heard of the Complainant and was unaware that the Complainant had ever used the term HUNTER. The Respondent registered the name because of its generic meaning, since the term HUNTER is apt and indicative of an Internet search engine, which essentially is a "hunter" of particular web sites.

 

The word “hunter” is both a generic and a descriptive term, with substantial third party use.

 

A cursory Internet hunt using any common search engine (e.g., Yahoo, Google, Alta Vista) reveals millions of "hits," namely, websites, web pages and references to "HUNTER" which, without any notable exceptions, demonstrates countless third-party uses in connection with goods, services, and non-commercial references that are totally unrelated to (1) electronic apparatus for testing vehicle brakes and alignment of wheels (2) measuring instruments and gages and (3) wheel balancing apparatus and parts.  For example, a hunt on the Google search engine of the term HUNTER reveals 5,080,000 web sites and a hunt of the term HUNTER on the Yahoo Search Engine produces 3,590,000 web pages, wherein HUNTER refers to one who hunts game, a dog bred or trained for use in hunting, horses, one who searches for or seeks something, the color green, a surname and cities in Arizona, Kansas, North Dakota, New York and Tennessee.

 

A search for the term "HUNTER" on the website, <overture.com> (wherein advertisers bid for placement on search engines like Yahoo, Infospace, MSN, Alta Vista, Lycos and HotBot based on relevant keywords) reveals that at least 40 advertisers use the paid keyword listings for the generic term "HUNTER" to drive customers to their respective web sites. The record demonstrate that HUNTER is used with reference to numerous products, including, but not limited to, irrigation and plumbing supplies, fans, sprinklers and filter. In addition, HUNTER is used as a surname, a city in Colorado and as a synonym for "search."

A search of business names within the State of California reveals that hundreds of companies within California use business names that comprise or consist of HUNTER.

 

A significant number of the top level domain extensions (including <hunter.net>, hunter.org and registered country code domain extensions (including <hunter.it>, <hunter.fr>, <hunter.de>, <hunter.us>, among others) are not owned by the Complainant.

 

There are 965 records of trademarks that contain or consist of the term HUNTER in the United States Patent and Trademark Office. A cursory search of the records therein reveals numerous instances wherein third parties have claimed rights to marks containing or consisting of the term "HUNTER", but disclaimed the "HUNTER" portion of their mark, admitting the generic nature of the term. For example, Bradley (Registration No. 2385706), Leupold & Stevens (Registration No. 2323536), King (Registration No. 2337522), American Softworks Corporation (Registration No. 2349088), Taurus International Manufacturing (Registration No. 2378016), O.F Massberg and Sons, Inc. (Registration No. 2366723), Fairfield Line, Inc. (Registration No. 2124257), Pena (Registration No. 2070707), American Hunter-Jumper Foundation, Inc. (Registration No. 1980636), JRH Sports Industries (Registration No. 1942848), Shern1an (Registration No. 2039725) and Hunter's Gold (Registration No. 1981110) have each, among others, disclaimed the exclusive right to use HUNTER within their respective marks.

 

The Respondent denies that he registered the subject domain name with the intention of selling it to the Complainant or of disrupting the Complainant’s business.

 

The following information is derived from the Complainant’s Additional Response.

 

The Respondent has provided no demonstrable business preparation made by him to make use of the subject domain name as an “on-line Internet search engine related to Internet Service Providers in the U.S. and Canada.” 

 

The Respondent has made no effort to refute the Complainant’s allegation of cybersquatting.

 

Due to the difficulty of searching registrant information, it is impossible to know the  Respondent’s complete domain name holdings because he has opted-out of bulk information sales of WHOIS information to third parties.  The Complainant was able to find that the Respondent has also registered <devil.biz>,< boss.biz>, <most.bi>z and <move.biz> and those domain names were discovered by checking names for sale at <bestnames.net>.  They no longer are for sale at that site.

PARTIES’ CONTENTIONS

A. Complainant

 

The Complainant relies on its registration and use of the word “hunter” and asserts that the subject domain name is identical to it.

 

To support the allegation that the Respondent does not have a legitimate interest in the subject domain name, the Complainant states that the Respondent has done nothing to use the subject domain name and is not known commonly by it or by the word “hunter”.  In addition, it notes that the Respondent appears to have been in the business of selling domain names and that it is involved in other internet ventures.

 

Bad faith is said to derive from the course of conduct of the Respondent as a seller of domain names.  The Complainant also asserts that the Respondent’s intention is to attract users to its web site by creating a likelihood of confusion with the Complainant.

 

B. Respondent

 

The Respondent does not address directly the question whether the subject domain name is identical to the Complainant’s mark.

 

The Respondent states that he registered the subject domain name for a legitimate business purpose, which is unrelated to any trademark rights of the Complainant.  In this context he contends that the word “hunter” is generic and that he has a right to use it as he does.

 

Although, he does not address directly the allegation that he is in the business of selling domain names, the Respondent denies that he registered the subject domain name with the intention of selling it to the Complainant.  He states that at the time of registration he had not heard of the Complainant. Noting that his proposed use of the subject domain name does not relate to the goods and services for which the Complainant has its marks, the Respondent denies that he is attracting customers through confusion with the Complainant.

 

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

(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.

 

Complainant’s Rights in the Mark

 

The Respondent presented information and argument to support the proposition that the word “hunter” is generic.  If this were designed to attack the legitimacy of the Complainant’s trademark registrations, this proceeding would not be the correct forum.  In the context of a STOP proceeding, the information has more relevance to whether the Respondent has a legitimate interest in the subject domain name.

 

It is clear that the Complainant has rights to the mark “hunter”.  It has a number of registrations for it and has used it extensively.

The subject domain name differs from the mark only by the addition of .biz and that is of no consequence.

 

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

 

Respondent’s Rights or Legitimate Interests

 

As noted, this proceeding is not a proper forum to resolve questions concerning the validity of the Complainant’s registered marks, but the scope of the goods and services and the nature of the word used in the marks can be a matter of inquiry.

 

The information provided to the Panel shows clearly that the word “hunter” is in common use with many meanings and for many purposes.  The Respondent does not plan to use the term in a context that engages the subject matter of the Complainant’s marks.  Considering the extensive use of the term, there is no basis to conclude that any confusion between the subject domain name and the Complainant should occur.

 

In a STOP proceeding, it is not unusual for there to have been little use of the domain name in issue because the proceeding takes place close to the initiation of the use.

 

It may be that the Respondent has been or is in the business of selling domain names, but he denies that this was his intention when he registered the subject domain name.

 

In summary, the information provided to the Panel is that the Respondent had a business intention when he registered the subject domain name, that he did not know of the existence of the Complainant at that time and that the Complainant does not have exclusive rights to the word “hunter”

 

It may be that in another forum the Complainant could establish that the Respondent has violated rights of the Complainant, but on the information provided to the Panel in this proceeding, it cannot be said that the Respondent does not have a legitimate interest in the subject domain name.

 

The Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

 

Registration or Use in Bad Faith

 

The fact that a Respondent has followed a course of conduct that suggests bad faith is a relevant consideration in a STOP proceeding and where it is not answered, appropriate inferences may be drawn.  In this case, there is unchallenged information that the Respondent has been or is in the business of selling domain names, but he denies any intention to do so with respect to the subject domain name.

 

It also is alleged that the Respondent seeks to profit from the Complainant’s mark by confusing potential customers, but the Respondent also denies this as points to the fact that he had not heard of the Complainant when the Respondent registered the subject domain name.

 

Domain name dispute proceedings are not designed to resolve disputed issues of fact or matters of credibility concerning which parties provide acceptable information.

 

It may be that in an appropriate forum equipped with procedures to explore disputed issues of fact, that the Complainant could establish bad faith registration or use, but in this case, the information provided to the Panel does little more than raise a spectre of bad faith.  That is not enough.

 

The Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

 

DECISION

                 

Based on the information provided to it and on its findings, the Panel concludes that the Complainant has not established its claim.  It is dismissed.  Subsequent challenges under the Policy against the subject domain name will be permitted.

 

 

 

 

Edward C. Chiasson Q.C., Panelist
Dated:  June  20, 2002

 

 

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