START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

National Business Furniture v. Daniel Smith

Claim Number: FA0204000112590

 

PARTIES

Complainant is National Business Furniture, Milwaukee, WI (“Complainant”), of National Business Furniture.  Respondent is Daniel Smith, Austin, TX (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <officefurniture.biz>, registered with Namescout.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Min S. Xu, Esquire 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 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 28, 2002.

 

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Min S. Xu as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns several U.S. federal trademark applications for its trademark “officefurniture.com” for use in connection with “online retail store services featuring office furniture and accessories in International Class 035.”  Complainant also contends that it intends to continue using this trademark in connection with  “online retail store services featuring office furniture and accessories in International Class 035.”  Further, Complainant contends that it currently operates under the name officefurniture.com and has applied for a registered trademark for the logo used for officefurniture.com.  Furthermore, Complainant contends that Respondent registered the domain name in bad faith.

 

B. Respondent

Respondent contends that the trademark owned by the Complainant is not identical to the domain name in dispute: <officefurniture.biz>, and that the Complainant has no legal rights to the domain name in dispute.  Respondent also contends that the Respondent has the rights to retain the domain name in dispute, and that the Respondent has not registered the domain name in bad faith.  Further, Respondent contends that the Complainant is trying to harass the Respondent and prevent the Respondent from doing business (Reverse Domain Name Hijacking allegation under the STOP Policy).

 

Respondent submits a copy of a reply email and original email between the Respondent and the Complainant regarding buying and selling of the domain name.

 

FINDINGS

It is the Panel’s finding that the Complainant has not proved that the domain name is identical to a trademark or service mark in which the Complainant has rights; that the Complainant has not proved that the Respondent has no rights or legitimate interests in respect of the domain name; and that the Complainant has not proved that the domain name has been registered or is being used in bad faith.

 

Also, it is the Panel’s finding that the Respondent has not proved that it has rights or legitimate interests in respect of the domain name, and therefore subsequent challenges under the STOP Policy against this domain name shall be permitted.

 

Further, it is the Panel’s finding that the Respondent did not provide sufficient showing of bad faith on the Complainant’s part to warrant a finding of Reverse Domain Name Hijacking.

 

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 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’s Rights in the Mark

Under the STOP Policy, the burden of proof of rights in the mark is on the Complainant.

 

Complainant filed two U.S. federal trademark applications for its trademark “officefurniture.com” for use in connection with online retail store services featuring office furniture and accessories in International Class 035.  Both trademark applications (Serial Numbers 76/330,518 and 76/329,574) were filed on October 26, 2001 with the first use date in interstate commerce of December 1999.  However,  the Complainant has not yet obtained a registered trademark in “officefurniture.com”.  The trademark applications are still pending in the U.S. Patent & Trademark Office under examination.

 

Under the common law trademark rights, the Complainant has not demonstrated sufficiently strong identification of its mark such that there would be recognition among the Internet users that its mark identified goods or services in association with or unique to the Complainant.  Further, the name “office furniture” may be considered as being descriptive.  It is noted that one of Complainant’s U.S. federal trademark applications (Serial Number 76/329,574) has been moved to a Supplemental Register to establish distinctiveness by acquiring the mark’s secondary meaning.  It is also noted that there is a disclaimer made in the other Complainant’s U.S. federal trademark applications (Serial Number 76/330,518), “No claim is made to the exclusive right to use ‘officefurniture.com’ apart from the mark as shown” (trademark logo).

 

Accordingly, this Panel finds that the Complainant has not yet established protectable rights in its “officefurniture.com” or “officefurniture.biz” mark and thus fails to meet the burden of proof.

 

Respondent’s Rights or Legitimate Interests

Under the STOP Policy, if Complainant does not have rights in the mark, the Complaint is dismissed, and the Panel must also determine whether Respondent has rights or legitimate interests in the disputed domain name so as to determine that subsequent challenges under the STOP Policy against this domain name shall be permitted.

 

No evidence has shown that Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name.  The Respondent has not proved that the Respondent has rights or legitimate interests in respect of the domain name.  There is no proof that the Respondent has obtained any registered trademark for the domain name or any trademark rights under the common laws.  Also, the Respondent’s business has not been commonly known by the domain name.  The Respondent stated that their plans were to have a website fully developed and operational within three to six months.  However, there is no further evidence or demonstrable preparation from the Respondent to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  The Respondent’s unsupported, self-serving allegations alone are insufficient to establish that the Respondent has rights to 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).

 

Therefore, this Panel finds that subsequent challenges under the STOP Policy against this domain name shall be permitted.

 

Registration or Use in Bad Faith

Under the STOP Policy, the burden of proof of Respondent’s registration or use in bad faith is on the Complainant.

 

In this case, the Complainant does not provide evidence to demonstrate that the domain name has been registered or is being used in bad faith.  On the other hand, the Respondent provided evidence in its reply email to the Complainant that the Respondent is planning to develop the website for search engine.  There is no further rebuttal evidence from the Complainant.  It is also noted from the email correspondences between the Respondent and Complainant that the Complainant made the initial contact to the Respondent to buy the domain name.

 

This Panel finds that no sufficient evidence of bad faith on the part of the Respondent.

 

Reverse Domain Name Hijacking

Under the STOP Policy, the burden of proof of Reverse Domain Name Hijacking by the Complainant is on the Respondent.  Besides mere allegations, the Respondent failed to provide any evidence that the Complainant has harassed the Respondent and prevented it from doing business and/or filed the Complaint in bad faith.  The mere fact that the Complainant did not make a serious offer to buy Respondent’s domain name but instead filed a Complaint is not enough to warrant a finding of Reverse Domain Name Hijacking.

 

DECISION

It is the decision of this Panel that the domain name in dispute, <officefurniture.biz>, be retained with Respondent, that the Complaint is dismissed, and that subsequent challenges under the STOP Policy against this domain name are permitted.

 

 

 

Min S. Xu, Esq., Panelist

Dated: July 8, 2002

 

 

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