National Business Furniture v. BDG
Marketing
Claim Number: FA0204000112588
PARTIES
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.
A.
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.
B.
Respondent
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
None
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.
DECISION
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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