National Business Furniture v. BDG Marketing
Claim Number: FA0204000112588
Complainant is National Business Furniture, Milwaukee, WI, USA (“Complainant”). Respondent is BDG Marketing, Ubud, Bali, INDONESIA (“Respondent”) represented by Martin Thomas.
The domain name at issue is <furniture.biz>, registered with Easyspace Ltd.
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 27, 2002.
On May 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 5, 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 20, 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 by its domain names to hundreds of thousands of large and small businesses.
Complainant has made application with the United States Patent and Trademark Office for a trade or service mark in the words FURNITUREONLINE.COM. Complainant owns several trademark applications for its trademark, OFFICEFURNITURE.COM, for use in connection with “online retail store services featuring office furniture and accessories.”
Complainant owns and operates websites at <OFFICEFURNITURE.COM> and <FURNITUREONLINE.COM>.
Complainant operates six separate catalogs and seven separate online commerce sites, all of which provide the product indicated by the domain name.
Complainant currently operates under the name OFFICEFURNITURE.COM.
Respondent does not demonstrate the intent to use the domain name, <FURNITURE.BIZ>, or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Respondent does not appear to be in the business that the domain name implies.
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.
It is not known whether the Respondent registered the domain name in order to interfere with Complainant’s business.
It is not known whether the Respondent is even in the furniture industry.
It is Complainant’s belief that the use of this domain name will misrepresent the business conducted by the Respondent and confuse and misdirect Internet users.
Respondent is the marketing division of the Bali Direct Group of companies, which was formed in 1995 as a single company, namely Bali Direct, which sold, and still sells, handicrafts to many hundreds of wholesale customers all over the world.
The company, which is based in Bali, Indonesia, is made up of several separate companies, which all provide different services and/or trade in different products, including handicrafts, jewelry, fashion accessories, furniture and home accessories.
Respondent operates several websites that it uses to promote the goods that it sells.
Respondent registered <FURNITURE.BIZ>, and it is intended that the corresponding website will offer for sale a wide range of furniture and related products.
The domain name, <FURNITURE.BIZ>, is not identical to any of the Complainant’s trademarks or service marks.
Furniture is a generic word, which forms only part of Complainant’s trademarks. The generic word, FURNITURE, is used by the Complainant, many of Complainant’s direct competitors, and one of the Respondent companies, and probably thousands of other businesses around the world to form part of their trading names and slogans or trademarks.
Respondent has no interest in Complainant’s trademarks nor does Respondent intend to sell the domain name.
Complainant fails to prove that Respondent has no rights or legitimate interests in the domain name <FURNITURE.BIZ>.
Complainant fails to prove that the domain name <FURNITURE.BIZ> was registered or used in bad faith.
C. Additional Submissions
1. Complainant is National Business Furniture, a business organization, the form of which is not disclosed in the Complaint.
2. Complainant is a direct marketer of office furniture through catalogs and online commerce sites. Complainant offers it goods through websites at <OFFICEFURNITURE.COM> and <FURNITUREONLINE.COM>.
3. Complainant contends that it has filed applications with the United States Patent and Trademark Office for a trademark or service mark in FURNITUREONLINE.COM, but attaches no such application to the Complaint. Complainant states that it has applied for trademarks or service marks for OFFICEFURNITURE.COM, but no applications are attached to the Complaint. Complainant contends that FURNITUREONLINE.COM was first used in commerce on July 1999 and that OFFICEFURNITURE.COM was first used in commerce on December 1999. Respondent concedes, for the purpose of this proceeding, that Complainant’s bare allegations are true.
4. Respondent is BDG Marketing doing business in Bali, Indonesia, a “company”, the exact nature of which is not disclosed in the Response.
5. Respondent is in the business of selling handicrafts and other items on the Internet at various websites, including <BALIDIRECT.COM>, <ARTISTICSOURCES.COM> and <PARADISECHIMES.COM>.
6. Respondent registered the domain name, <FURNITURE.BIZ> on March 27, 2002.
7. The domain name <FURNITURE.BIZ> is not identical to any trademark or service mark in which Complainant has rights.
8. Complainant fails to prove that Respondent has no rights or legitimate interests in the domain name, <FURNITURE.BIZ>.
9. Complainant fails to prove that Respondent registered or used the domain name, <FURNITURE.BIZ>, in bad faith.
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 that 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 or 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 when 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).
What is left of the names involved in this case is FURNITURE as the disputed domain name and OFFICEFURNITURE and FURNITUREONLINE, as the alleged marks of the Complainant.
Complainant has no trademark or service mark registrations to its credit. It may have some limited common law rights in the terms OFFICEFURNITURE and FURNITUREONLINE. Complainant presents no evidence of any kind for the proposition that it has trademark or service mark rights in the word FURNITURE standing alone. Indeed, Complainant could not present such evidence. The word, FURNITURE, is a common generic word in the English language.
Respondent states that on May 18, 2002, on the USPTO website, there were 584 companies that use the word “furniture” to form part of their registered federal trademark or applications for federal trademarks. This, Respondent contends, shows that no company has the exclusive right to use the word, “furniture.” Respondent contends that an Internet search was made at www.google.com, which returned 8,270,000 results for the single word “furniture.” Respondent states that the results revealed that some 70 such results, had links to companies selling furniture and that it was noticed that a large number of the companies had domain names that included the word “furniture” including <furnitureusa.com>, <advancefurniture.com>, <starfurniture.com>, <furniture-info.com>, and <worldfurnitureonline.com>. Respondent failed to attach these results to the Response so that the Panel could examine them but the allegations stand unrebutted and the Panel is inclined to accept Respondent’s contentions since they seem reasonable under the facts and circumstances of this case.
A mark that is a common descriptive name of an article is referred to as a generic mark. A generic term is one that refers to the genus of which a particular product is a species. see Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). The word FURNITURE fits this definition. The fact that Complainant has applied for a trademark or service mark registration standing alone establishes neither rights nor presumptions that Complainant has rights in FURNITUREONLINE.COM or OFFICEFURNITURE.COM. see Bar Code Discount Warehouse, Inc. v. Barcodes, Inc. dba Barcode Discount, D2001-0405 (WIPO July 27, 2001). It certainly establishes nothing favoring Complainant as to Complainant’s rights to a trademark or service mark in the word, FURNITURE.
In theory, Complainant might establish that a commonly descriptive term has acquired sufficient secondary meaning to be exclusively associated with Complainant and thereby serve as a trademark or service mark. However, where the mark alleged is a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain. See Bar Code Discount Warehouse, Inc. v. Barcodes, Inc. dba Barcode Discount, D2001-0405 (WIPO July 27, 2001); Pet Warehouse v. Pets.com, Inc., D2000-0105 (WIPO Apr. 13, 2000).
To establish common law rights in a descriptive word, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. See Amsec Enterprises, L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 200). “Even if Complainant had established such rights, however,” a “highly descriptive” mark would be “deemed a weak mark and absent proof of fame or widespread recognition, it would be entitled to narrow protection at best. Generally, the scope of rights afforded to weak descriptive marks is limited to protection against identical marks.” Amsec Enterprises, L.C. v. McCall, ibid.
Complainant has attempted to make no showing that the word, FURNITURE, is not generic. Complainant has made no attempt to produce any evidence of secondary meaning. Complainant has produced nothing except that it operates websites at <FURNITUREONLINE.COM> and <OFFICEFURNITURE.COM>.
The Panel finds that the domain name, <FURNITURE.BIZ> is not identical to FURNITUREONLINE.COM or OFFICEFURNITURE.COM as contemplated by STOP Policy and Rules for .BIZ. compare Commonwealth Bank v. Rauch, FA102729 (Nat. Arb. Forum Feb. 23, 2002). The Panel finds that Complainant has not established by proof any rights in any trademark or service mark that it owns in order to make this case an applicable dispute under STOP Policy, Paragraph 4(a)(1).
Complainant’s failure to prove that the domain name, <FURNITURE.BIZ> is identical to a trademark or service mark, in which the Complainant has rights, terminates this domain dispute case in favor of the Respondent.
Because of the finding in the section next above, it is not necessary to decide this issue. However, the Panel notes that no evidence was presented by Complainant to suggest that Respondent has no rights or interests in the generic domain name, <FURNITURE.BIZ>. Respondent gives a plausible explanation of why the domain name was registered. Generally, the first to register a domain name containing a generic mark should prevail absent bad faith. see CRS Technology v. Condenet Inc. FA 93547 (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). see also Scorpions Musikproductions v. Alberta Hot Rods, D2001-0787 (WIPO Nov. 7, 2001).
Complainant presented no evidence of bad faith. No conduct on the part of the Respondent can be found in the pleadings to justify a finding of bad faith against Respondent.
The Complaint of National Business Furniture is DISMISSED and the request to transfer the domain name, <FURNITURE.BIZ> is DENIED. Further IP Claims against this domain name under the STOP Policy SHALL be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 5, 2002
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