National Business Furniture v. Web Express
Claim Number: FA0204000112587
Complainant is National Business Furniture, Milwaukee, WI (“Complainant”). Respondent is Web Express, Inc., Bridgewater, NJ (“Respondent”).
The domain name at issue is <furnitureonline.biz>, registered with 007 Names, 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.
Hon. Ralph Yachnin 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”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
The <furnitureonline.biz> domain name is identical to Complainant's FURNITUREONLINE.COM mark.
Respondent has no rights or legitimate interests in the <furnitureonline.biz> domain name.
Respondent registered the <furnitureonline.biz> domain name in bad faith.
Respondent has failed to submit a Response.
Complainant has applied for a trademark with the United States Patent and Trademark Office for FURNITUREONLINE.COM. Complainant asserts that it has used this mark in commerce since 1999 in relation to its online furniture business.
Respondent registered the disputed domain name on March 27, 2002.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
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 established that it has rights in the FURNITUREONLINE.COM mark due to its use in commerce since 1999 in relation to its online furniture business. Complainant has not asserted any rights in FURNITUREONLINE without the “.COM” addition to the mark. However, it has been recognized that gTLD’s are interchangeable in trademarks, and irrelevant when determining whether a domain name is identical or confusingly similar. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, even though FURNITUREONLINE.COM is not exactly identical to <furnitureonline.biz>, they are recognized as such under the law. See U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of Domain Names," Section I (Sept. 29, 1999) (“When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address."); see also AJC Int’l v. None a/k/a Cox Holdings, FA 109367 (Nat. Arb. Forum June 11, 2002) (finding that, for the purpose of domain name disputes, Respondent’s service mark in AJC.COM was equivalent to AJC and thus identical to <ajc.biz>).
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Despite the fact that all inferences may be made in favor of the Complainant, Complainant has failed to properly assert that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has merely repeated the STOP Policy, and has failed to assert any grounds upon which the Panel may make any inferences or findings. See Burke Inc v. Leader Tech. LLC, FA 102822 (Nat. Arb. Forum March 29, 2002) (“The Panel will not erect castles in the air in order to make a case hypothetically where the Complainant wholly fails to meet its obligations under the Rules to set forth the grounds on which the Complaint is based and the supporting evidence. Since the Complainant has not provided any evidence of rights in any trademark or service mark, the first condition of paragraph 4(a) of the STOP Policy was not met, and the Panel need not consider the matter further.”).
Therefore, the Panel finds that there is insufficient evidence to find whether or not Respondent has rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii), or registered and used the <furnitureonline.biz> in bad faith pursuant to STOP Policy ¶ 4(a)(iii).
Having failed to establish a necessary element required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby denied.
Accordingly, it is Ordered that the Complaint be dismissed. There are no further challenges pending against this domain name under the STOP Policy.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 17, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page