omnium communications limited v. Kivilcim Istanbulluoglu
Claim Number: FA0204000112566
Complainant is omnium communications limited, London, UK (“Complainant”) represented by John D Perceval. Respondent is Kivilcim Istanbulluoglu, Samanpazari, TURKEY (“Respondent”).
The domain name at issue is <find.biz>, registered with BB Online UK Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 29, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.
On May 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 17, 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 17, 2002.
On July 15, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant, Omnium Communications Ltd., contends that FIND has been its trade name since October 1996 and the <find.co.uk> website is its sole business. Complainant contends that any applicant for the domain name “probably” intends to sell the name or holds the name to prevent Complainant from using the name.
Respondent, Kivilcim Istanbulluoglu, contends that Complainant’s web address <find.co.uk> is not identical to <find.biz>. Respondent contends that FIND is a generic word in which Complainant cannot have any protectable rights.
Respondent owns Interaktif Ltd., <interaktif.com>, an IT company in Turkey. He registered <find.biz> to develop a business search engine. Respondent claims that there are 50,311 registered domain names containing the word “find” and that there are 89,700,000 results for “find” at Google.com.
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 has failed to establish that it has rights to the FIND mark through trademark registration or common law.
The Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.
A Respondent may demonstrate its rights or interests in a STOP proceeding by proving that it is the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name. See High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar. 6, 2002) (noting that, although the result might have been different had the Complainant’s case been brought under the UDRP, the Respondent’s trademarks in THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its rights and interests under STOP Policy ¶ 4(a)(ii) in the <thrashermagazine.biz> domain name). Respondent has offered no evidence that he owns a trademark or service mark for FIND.
A Respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). Respondent has failed to submit any evidence showing preparations to use the domain name. A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Finally, a Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii). Respondent has failed to submit any evidence that he is known by the domain name.
The Panel finds that Respondent does not have a protectable interest in the domain name and that STOP Policy ¶ 4(a)(ii) has been satisfied.
Complainant offers no evidence of Respondent’s bad faith; therefore the Panel finds that STOP Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish two of the three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby denied and the Complaint is dismissed. Subsequent challenges under the STOP Policy against the domain name <find.biz> shall be permitted.
The Honorable Charles K. McCotter, Jr.
Dated: July 23, 2002
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