National Business Furniture v. Tigre
Claim Number: FA0204000112586
Complainant is National Business Furniture, Milwaukee, WI (“Complainant”), represented by Kent Anderson. Respondent is Tigre, Yuma, AZ (“Respondent”) represented by Pete Erlenbach.
The domain name at issue is <chairs.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.
Tyrus R. Atkinson, Jr., 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 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.
On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 29, 2002.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr. as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is the largest direct marketer of office furniture through a catalog and offers the largest selection of the product described in its domain names to hundreds of thousands of small businesses as well as Fortune 500 companies.
Complainant operates six separate catalogs and seven separate online commerce sites, all of which provide the product indicated in the domain names.
Complainant owns the US federal trademark application for FURNITUREONLINE.COM, for use in connection with “online retail store services featuring office furniture and accessories; home furniture and accessories.” This mark was first used in commerce on July 1999.
Complainant owns several United States federal trademark applications for its trademark OFFICEFURNITURE.COM. This mark was first used in commerce on December 1999.
It is the belief of Complainant that the domain name <CHAIRS.BIZ> was registered by Respondent in bad faith. Respondent does not appear to be in the business that the domain name implies. The Respondent does not demonstrate the intent to use the domain name in connection with a bona fide offering of goods or services. The Respondent does not use the domain name in the course of any known business. It is not known whether the Respondent intends to sell the domain name to the Complainant or its competitors.
Respondent is a small business owner and operator in the City of Yuma, Arizona, licensed to conduct a Home Occupation Business.
Respondent’s business is engaged in the limited manufacture, production, and sale, of fine craftsmanship quality wood products such as chairs, benches, stools, cabinets, tables, and picture frames.
Respondent has a bona fide intention to use the <CHAIRS.BIZ> domain name to commence WWW commerce to increase sales of one of Respondent’s unique products.
Respondent is not engaged in the act of competition with Complainant or its competitors and has no future intention to do so.
The word CHAIRS is a generic term that refers to an entire class of products.
Respondent asserts that prior to receipt of the Complaint, Respondent possessed no prior knowledge of the existence of Complainant or its business.
Respondent asserts that it has not registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.
Respondent asserts that it has not registered the domain name primarily for the purpose of disrupting the business of a competitor.
Respondent asserts that it has no purpose to create a likelihood of confusion with the Complainant’s mark.
C. Additional Submissions
1. Complainant is a business organization that sells furniture and related products by means of catalogs and Internet web sites located at <FURNITUREONLINE.COM> and <OFFICEFURNITURE.COM>.
2. Complainant contends that it has made application for trademarks with the United States Patent and Trademark Office for the words, FURNITUREONLINE.COM and OFFICEFURNITURE.COM. Complainant does not include copies of these alleged applications, but since Respondent does not dispute these alleged applications, their existence is accepted for the purposes of this proceeding.
3. Complainant alleges that it has used FURNITUREONLINE.COM and OFFICEFURNITURE.COM in commerce since the year 1999. No evidence is presented to prove this allegation. Respondent does not dispute these allegations so the allegations are taken as true.
4. Respondent is a small business owner allegedly engaged in the manufacture and sale of wood products including chairs. No evidence is presented to support this allegation, but Complainant does not dispute the allegation so it is taken as true.
5. Respondent registered the domain name, <CHAIRS.BIZ>, on March 27, 2002.
6. Complainant has shown no trademark or service mark in which it has rights that is identical to the domain name, <CHAIRS.BIZ>.
7. Complainant has proved no rights or legitimate interests in the domain name, <CHAIRS.BIZ> or the word, CHAIRS.
8. Respondent has proven no rights or legitimate interests in the domain name, <CHAIRS.BIZ>.
9. Complainant has proved no bad faith registration or use of the domain name, <CHAIRS.BIZ>, on part of Respondent.
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 purpose of the Start-up Trademark Opposition Policy and Rules for .BIZ is to examine the .BIZ domain name “matching the exact alphanumeric string contained in the trade or service mark in which the Claimant has rights.” See Paragraph (1). The domain name must “identically” match a trade or service mark string. The Policy does not make it clear whether the .BIZ domain name must be exactly the same as the trademark or service mark, as opposed to whether the .BIZ name is merely identical to some part of a trademark or service mark in which Complainant has rights.
In comparing the .BIZ and trademark or service marks alleged to be held by Complainant in this case, the first consideration is to ignore the generic top level (“gTLD”) domain indicators. The indicators, .BIZ and .COM, are irrelevant with determining whether a domain name and mark are identical. see Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA102811 (Nat. Arb. Forum Feb. 8, 2001). No characters and symbols that are impermissible in domain names, such as apostrophes, ampersands, and other punctuations are to be considered. see Commercial Investors Realty v. Bank of New York, FA103040 (Nat. Arb. Forum Feb 18, 2002).
Applying these rules to the present case what remains is Complainant’s alleged marks, OFFICEFURNITURE and FURNITUREONLINE to be compared with the disputed domain name, CHAIRS, without the .BIZ indicator. Complainant has no registered trademarks or service marks. It may have limited common law rights to OFFICEFURNITURE and FURNITUREONLINE. The fact that Complainant has applied for a trademark or service mark registration standing alone establishes neither rights or presumptions that Complainant has rights or interests in the marks for which application is made. See Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001).
Complainant fails to explain how or why the word, CHAIRS, is identical to, similar to, or related in any way anticipated by the Start-up Trademark Opposition Policy and Rules for .BIZ to the only marks advanced by Complainant to be here involved, OFFICEFURNITURE and FURNITUREONLINE. The elementary fact is that the terms are not identical. Nothing can be found in the words OFFICEFURNITURE and FURNITUREONLINE to suggest in any understandable manner a creation of a right or interest in the word, CHAIRS. The Panel cannot ascertain the reasoning of Complainant in filing the Complaint generating this domain name dispute. Complainant fails to reveal its theory in the Complaint.
An Applicable Dispute is defined in the Policy as one in which the domain name is identical to a trademark or service mark in which the Complainant has rights. see Paragraph 4(a)(i). The Rules require a Complaint to “Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, (1) the extent to which the domain name(s) is/are identical to a trademark or service mark in which Complainant has rights.” see Rule 3(c)(ix).
Complainant failed to comply with the Policy and Rules. “If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. see Rule 15(d). The conclusion is reached in this case that this case is not an applicable dispute since the domain name and the words in which Complainant contends it has rights are not identical within the meaning of the Policy. Complainant proved no rights in the word CHAIRS or the domain name, <CHAIRS.BIZ>.
Respondent argues that the word, CHAIRS, is a generic term that refers to an entire class of products and that within the purview of trademark law, the term means a lack of distinctiveness necessary for the name or mark to be given Federal Trademark Law protection. Generic marks, Respondent argues, are marks, which embrace entire classes or products or services, not all of which emanate from the same source. A generic term, Respondent continues, is one, which is commonly used as a name, or description of a kind of goods and it is generally accepted that a generic term is incapable of achieving trade name protection.
Indeed, Respondent argues, the term CHAIRS is so greatly generic that the term is incapable of being granted Federal Trademark Law protection. The generic term, Chairs, can be, and is, used by any one of thousands of similar furniture stores across the United States, Respondent concludes. Respondent cites several United States District Court cases to support its argument.
Complainant does not address the issue of whether the disputed domain name is generic or not, nor does Complainant dispute that the term, CHAIRS, is a generic term.
The Panel agrees with the undisputed position of Respondent that the word, CHAIRS, is generic for the purposes of deciding this dispute. Under Respondent’s theory, neither Complainant nor Respondent has legitimate rights or interests in the word, CHAIRS. Respondent offers no proof to demonstrate rights to and legitimate interests in the domain name by any of the methods set out in Paragraph 4(c) of the Policy. Without proof of these issues, Respondent cannot be found to have rights and interests. see Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Generally, the first to register a domain name containing a generic mark should prevail absent bad faith. see CRS Technology v. Condenet Inc. FA93547 (Nat. Arb. Forum Mar. 28, 2000). A person may register a common, generic, word on a first come, first served basis as a general rule. see Zero International Holding GmbH v. Bayonet Services, D2000-0161 (WIPO May 12, 2000).
Complainant makes no attempt either by proper allegation or exhibit to prove Respondent’s bad faith registration or use.
IT IS THE DECISION OF THIS PANEL THAT THE COMPLAINT BE DISMISSED AND COMPLAINANT’S DEMAND FOR TRANSFER OF THE DOMAIN NAME, <CHAIRS.BIZ>, IS DENIED. IT IS ALSO FOUND THAT FURTHER CHALLENGES BE PERMITTED ON THE GROUND THE PANEL IS UNWILLING TO FORECLOSE THE POSSIBILITY THAT A PARTY MAY BE ABLE, UNDER THE POLICY AND RULES, TO MAKE OUT AN ADEQUATE CASE TO PREVAIL AS TO THIS DOMAIN NAME.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 10, 2002.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page