START-UP
TRADEMARK OPPOSITION POLICY
DECISION
MLS Network,
Inc. v. David Therrien
Claim Number:
FA0204000112582
PARTIES
Complainant is MLS Network, Inc.,
Mt. Pleasant, SC (“Complainant”) represented by William M. Hicken. Respondent is David Therrien,
Pasadena MD (“Respondent”) represented by Michael Yang, of Gorman
& Williams.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <mls.biz>,
registered with Gal Communications Ltd.
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.
Judge Richard B. Wickersham,
(Ret.) 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 April 28, 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 Start-up Trademark Opposition Policy (the
“STOP Rules”).
A timely Response was received and
determined to be complete on May 28, 2002.
On June 10, 2002, pursuant to STOP Rule
6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single
Panelist.
RELIEF
SOUGHT
Transfer of the domain name from
Respondent to Complainant.
A.
Complainant
[a] The domain name <mls.biz>
is identical to the service mark “MLS” in which the Complainant has
rights. STOP Rule 3(c)(ix)(1); STOP ¶
4(a)(i).
[b] The
Respondent, David Therrien, should be considered as having no rights or
legitimate interests in respect of the domain name <mls.biz>. STOP Rule 3(c)(ix)(2); STOP ¶ 4(a)(ii).
[i.]
Respondent is not the owner or beneficiary of a trade or service mark
that is identical to the domain name; and
[ii.]
The Respondent (as an individual, business, or other organization) has
not been commonly known by the domain name, even if Respondent has not acquired
trademark or service marks rights.
[c] The domain name <mls.biz>
should be considered as having been registered in bad faith. STOP Rule 3(c)(ix)(3); STOP ¶ 4(a)(iii).
[i.]
The Respondent has registered the domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name; and
[ii.]
By registering the domain name <mls.biz>, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s future or existing web site or other on-line location, by creating
a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s web site or location or
of a product or service on Respondent’s web site or location.
B.
Respondent
Respondent is an individual citizen and
resident of the State of Maryland.
Respondent has been a licensed real estate agent in the State of
Maryland since June, 1996, and has been a member of the National Association of
Realtors (“NAR”), the principal national governing entity for real estate
professionals, since August, 1996.
Respondent is the owner and President of a Maryland corporation in
existence as of February, 2000 and principally engaged in real estate-related
business.
Over the past seven years, Respondent
has, in the course of conducting his real estate business, endeavored to
modernize his business by utilizing the Internet.
The term multiple listing service is a
generic, common name for a type of service used to assist real estate
professionals as well as buyers and sellers of real estate in the process of
marketing and viewing properties for sale in a particular locale.
On or about September 1, 2001, Respondent
learned of the opportunity to register new Internet domain names in the .BIZ
domain. Respondent hoped to take
advantage of this opportunity by registering various Internet domain names for
use with his real estate business interests.
In deciding upon the domain names to be registered for business use,
Respondent made efforts to select domain names that are descriptive of the
services offered or to be offered by him such as MLS.
FINDINGS
[a] The domain name <mls.biz>is
identical to the service mark “MLS” in which the Complainant has rights. In STOP proceedings, the generic top-level
domain (“gTLD”) “.biz” is irrelevant when determining whether a domain name and
mark are identical, just as gTLDs such as “.com” and “.net” are disregarded in
UDRP cases. See Princeton Linear
Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat.Arb. Forum
Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a
factor, and hence to be ignored, when determining whether the domain name is
identical to a mark in which the Complainant has asserted rights).
[b] The Respondent, David Therrien, should
be considered as having no rights or legitimate interests in respect of the
domain name <mls.biz>.
[i.]
Respondent is not the owner or beneficiary of a trade or service mark
that is identical to the domain name; and
[ii.]
The Respondent (as an individual, business, or other organization) has
not been commonly known by the domain name.
[c] The domain name <mls.biz> should
be considered as having been registered in bad faith.
[i.]
The Respondent has registered the domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name; and
[ii.]
By registering the domain name <mls.biz>, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s future or existing web site or other on-line location, by creating
a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s web site or location or
of a product or service on Respondent’s web site or location. Because many of the “.biz” domain names were
very recently registered, Panels have previously held that, even when the
domain name has not been used, bad faith under STOP Policy ¶4(b)(iv) can be
demonstrated based on the confusion that will inevitably arise when the
Respondent finally uses the name. See Fluor
Corp. v. Song, FA 102757 (Nat.Arb. Forum Jan. 31, 2002) (finding that,
where the Respondent’s <fluor.biz> domain name was identical to the
Complainant’s FLUOR mark, Internet users would likely believe an affiliation
between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked
Scandinavia ab, FA 102970 (Nat.Arb. Forum Jan. 31, 2002) (finding
registration of a domain name identical to Complainant’s mark to be in bad
faith under STOP Policy ¶4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and 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 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 Complainant has rights in the mark,
as asserted in the Complaint and as evidenced by exhibit schedule “A”, service
mark MLS from United States Patent and Trademark Office, registered July 11,
2000, registration number 2,366,116, as well as evidenced by exhibit schedule
“B”, service mark MLS, United States Patent and Trademark Office, registered
October 9, 2001, registration number 2,496,018. The Panel further determines that Respondent has no rights or
legitimate interests in the disputed domain name, hence, the Panel concludes
that the Complainant has rights and the Respondent has no rights or no
legitimate interests in the mark.
The Panel further finds that the domain
name has been registered by Respondent in bad faith and is being used in bad
faith by Respondent, in respect of the domain name <mls.biz>.
The Panel finds that the domain name, <mls.biz>,
is identical to a trademark or service mark in which the Complainant has
rights; and further, that the Respondent has no rights or legitimate interests
in respect of the domain name; and the domain name has been registered or is
being used in bad faith. Hence, it is
the decision of the Panel that the domain name should be transferred from the
Respondent to the Complainant. Much
like UDRP Panels, STOP Panels have found that 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).
Additionally, it is not enough that a
Respondent claim that it registered the disputed domain name in anticipation of
being known by the name. It must
provide some proof that it is commonly known by the domain name to establish
rights under STOP Policy ¶4(c)(iii).
See Gene Logic Inc. v. Bock, FA 103042 (Nat.Arb. Forum Mar. 4,
2002) (“[T]o establish rights or legitimate interests in a name or a mark, the
Respondent must do more than state that he considered using it in the
past, along with other names he actually used”) (emphasis in original). Indeed, while the burden is initially placed
on the Complainant to show that a Respondent does not have rights or legitimate
interests in a domain name, after such a showing is made, the burden then
shifts to the Respondent “to explain by valid evidence a course of business
under the name, or at least significant preparation for use of the name prior
to learning of the possibility of a conflict.”
Gene Logic Inc., supra.
Further, we determine that subsequent
challenges against the STOP Policy against this domain name shall not be
permitted.
DECISION
The Panel finds that the Complainant has
proved each of the following three elements and is entitled to an Order that
the domain name should be transferred from Respondent to Complainant, to
wit: the domain name <mls.biz>
is identical to a trademark or service mark in which the Complainant has
rights; and further, the Panel finds that the Respondent has no rights or
legitimate interests in respect of the domain name; and, the domain name has
been registered or is being used in bad faith.
The Panel finds, therefore, in favor of
the Complainant and transfers the disputed domain name to
Complainant. We further determine that
subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
JUDGE RICHARD B. WICKERSHAM, (Ret.
Judge), Panelist
Dated: June 17, 2002
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