Eugene E. Pettinelli v. Postel Services, Inc.
Claim Number: FA0204000112600
Complainant is Eugene E. Pettinelli, Wayland, MA, USA (“Complainant”), pro se. Respondent is Postel Services, Inc., Seoul, KANGNAM-GU, SOUTH KOREA (“Respondent”), pro se.
The domain name at issue is <startup.biz>, registered with OnlineNIC, Inc. d/b/a Chinachannel.com.
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.
M. KELLY TILLERY, ESQUIRE 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 25, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 16, 2002.
Complainant submitted an Additional Submission after the deadline, thus, not in compliance with STOP Supplemental Rule #7. Also, Respondent submitted an Additional Submission after the deadline, thus, not in compliance with STOP Supplemental Rule #7.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant contends that it owns the following trademarks with Applications filed with the United States Patent and Trademark Office:
“STARTUP.BIZ” – USPTO Serial No. 76192969- Filing Date: January 11, 2001 and
“STARTUP.COM” – USPTO Serial No. 75485177 – Filing Date: May 14, 1998.
Complainant also contends that startup.com,Inc. is a party “related to Complainant” which owns the following trademark:
“STARTUPINTERNATIONAL.COM” – USPTO Serial No. 75890345 – Filing Date: 1/9/00
Complainant contends that Respondent does not own any related “startup” domain names such as <startup.net>, <startup.org>, <startup.com> or <startup.info>.
Complainant contends that Respondent has no registered trademark including the word “startup” in any jurisdiction.
Complainant contends that Respondent’s website (<postelkorea.com>) does not indicate any related business use of the term “startup” but rather is a “universal e-mail add-on service.”
Complainant contends that “STARTUP.BIZ” is a trademark of Complainant and any use by Respondent of <startup.biz> would cause confusion in the marketplace.
Respondent contends that the USPTO Trademark Registration “STARTUP.BIZ” is not valid in South Korea, the nation in which the Respondent resides and does business.
Respondent contends that Complainant’s “STARTUP.BIZ” U.S.P.T.O. Trademark Application was not filed until January 11, 2001, several months after the official announcement by ICANN of the .bizTLD launch in late 2000.
Respondent contends that according to Colins COBUILD English Dictionary, a “startup” company is a small business that has recently been started by someone and that “Start Up”, “Start-Up” and “Start Up Business” are generic nouns to which no one can claim exclusive rights and therefore no one can be barred from using “Start Up” in their website name.
Respondent contends that it is running a small online business and has ‘an interest in building a new company with new business items with friends and colleagues because everyone has a dream to run his or her own company.’ Respondent points out the “Start Up” is used in the STOP process itself and that STOP means “Start Up Trademark Opposition Policy” so “Start Up” is a generic term.
Respondent contends that Complainant has failed to provide proof that (1) Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of- pocket costs directly related to the domain name; (2) Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name; (3) Respondent has registered the domain name primarily for the purpose of disrupting the business of Complainant;
(4) Respondent has intentionally attempted to attract, for a commercial gain, internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship and/or affiliation or endorsement of Respondent’s website or location of a product or service on respondent website of location.
Respondent contends that its website could not be constructed because the <startup.biz> domain name has been in Registry Hold from April 8, 2002 and that the domain is expected to go live after all the IP claims are resolved.
Thus, Respondent contends that the fact that <startup.biz> has no website yet does not indicate that Respondent is holding the domain name passively. Respondent is simply waiting for the domain name to go live.
C. Additional Submissions
Both the Additional Submissions of Complainant and Respondent were untimely and will not be considered.
1) Complainant has failed to meet its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name is identical to a trademark or service mark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests in the domain name.
3) Complainant has failed to meet its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent registered or is using the domain name 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 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 Complainant has rights; and
(2) 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 Complainant asserts rights.
Complainant has failed to establish that it has “rights” in the mark “STARTUP”.
A review of the U.S. Patent and Trademark Office Trademark Electronic Search System reveals that an Application for the word mark “STARTUP.COM” was filed as an Intent to Use Application on May 14, 1998 and was approved for registration on the Supplemental Register (Serial No. 7548577). The current status is “final review prior to publication has been completed, application will be published for opposition” but no date has been scheduled for publication in the Official Gazette. Acceptance by the USPTO of a mark for publication on the Supplemental Register does not in and of itself establish that Complainant has rights in and to the mark. Registration on the Supplemental Register is not prima facie evidence of the validity of the registration or of the registrant’s ownership of the mark or of the registrant’s exclusive right to use the mark in commerce. In re Federated Dept. Stores, 3 U.S.P.Q. 2d 1541 (T.T.A.B. 1987).
The same records of the USPTO indicate that an Application for the word mark “STARTUP.BIZ” was filed as an Intent to Use on January 11, 2001 (Serial No. 76192969), that a communication from the Applicant was received by the USPTO on December 26, 2001 and shortly thereafter on May 9, 2002, a Letter of Suspension was issued by the USPTO. Thus, the Application for that mark is suspended, presumably at the request of the Applicant, Complainant herein. *
Although Complainant’s Complaint does not expressly claim that the marks are “registered”, it at best misleadingly suggests same and does not give an accurate report of the current status of the Applications. While this Panel allows some leeway with pro se complaints, this one comes dangerously close to being intentionally false.
Because Complainant has failed to prove that it has rights in the claimed mark as required by STOP Policy 4(a)(1), it unnecessary to consider whether Complainant has proven the additional required elements of the STOP Policy to determine whether to find for Complainant or Respondent.
Since the claimed “mark” STARTUP” is generic, Respondent cannot be the owner of beneficiary of a trade or service mark that is identical to the domain name. STOP Policy 4(c)(i). Respondent has not argued for or submitted evidence in support of a STOP Policy ¶4(c)(ii) or (iii) argument and this Panel finds no convincing evidence of Record otherwise to support Respondent’s claim of rights or interests. What is good for the goose is good for the gander. Respondent does not have rights or legitimate interests in the domain name in question.
Complainant has proffered no evidence to support its claim of registration or use in bad faith. Under these circumstances, Complainant has failed to prove by a preponderance of the credible, relevant and admissible evidence that the domain name in question was registered or is being used in bad faith.
Subsequent challenges under the STOP Policy against the domain name shall be permitted.
Complainant’s Complaint is hereby dismissed. Respondent shall retain the domain name <startup.biz>. Subsequent challenges under the STOP Policy against the domain name shall be permitted.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: June 25, 2002
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* Complainant’s claims regarding ownership of a similar mark by a “related company” are irrelevant. Startup.com,Inc., the so-called “related company” is not the Complainant herein.