Marco Publishing Corporation v. Blacker
Media
Claim Number: FA0205000113977
PARTIES
Complainant is Marco Publishing Corporation, Houston,
TX (“Complainant”) represented by Stephen H. Sturgeon, of Law Offices Of
Stephen H. Sturgeon & Associates, PC.
Respondent is Blacker Media,
Los Angeles, CA (“Respondent”) represented by Ari Goldberger, of
ESQwire.com Law Firm.
The domain name at
issue is <cars.biz>, registered
with Signature Domains.
PANEL
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. Charles A. Kuechenmeister (Ret.) is
the 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 May 10, 2002; the Forum
received a hard copy of the Complaint on May 13, 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”).
On June 7, 2002,
Respondent requested an extension of the Response deadline, which was granted,
giving Respondent until July 1, 2002 to respond.
A timely Response
was received and determined to be complete on July 1, 2002.
Complainant’s
additional submission was received on July 8, 2002.
Respondent's
additional submission was received on July 15, 2002.
Respondent
tendered a second additional submission after the deadline for submissions
expired. Because this submission was
untimely and contained no new material facts, the Panel did not consider it.
On July 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Transfer of the
domain name from Respondent to Complainant.
A. Complainant
Complainant owns a
current and valid Canadian trademark No. TMA 414881 for the word CARS and has
owned this mark since October 1, 1999.
Complainant
operates a consulting service in the car industry and publishes a periodic
newsletter entitled "Cars."
Complainant plans to offer these and other services in the future on the
site <www.cars.biz> should the
name be granted.
Complainant has
been unable to find any registrations, trademarks, service marks or properties
owned by Respondent or any use of the mark CARS by Respondent in any city,
state, federal or international jurisdiction.
Respondent is
believed to be a "cyber squatter" and has registered and been granted
(for the time being) a number of very valuable internet domain names in the
.BIZ category, including, but not limited to:
<cars.biz>
<law.biz>
<realestate.biz>
<insurance.biz>
<travel.biz>
<finance.biz>
<games.biz>
<gambling.biz>
<attorney.biz>
It is believed
that Respondent has never used the mark CARS, has no real intention to use the
mark CARS and has no trademark or service mark for the word CARS.
Respondent
registered <cars.biz> for the
purpose of selling, renting, or otherwise transferring that name registration
to the Complainant or to a competitor of the Complainant, for valuable
consideration in excess of Respondent's documented out‑of‑pocket
expenses directly related to the domain name.
If Respondent is
granted <cars.biz>, it will
create a likelihood of confusion with Complainant's Canadian trademark TMA
414884 as to the source, sponsorship, affiliation, or endorsement of
Respondent's website or location or of a product or service on Respondent's
website or location.
B. Respondent
Complainant has no
rights to CARS as a trade name. The
Canadian trademark for CARS currently held by Complainant is registered to
cover financial services, namely the purchase and sale of receivables and the
issuance to the public and the guarantee of debt and equity securities.
The trademark does
not cover Complainant's automotive consulting services or a newsletter about
cars. CARS is a generic or descriptive
word and cannot qualify for trademark protection in the application for which
Complainant proposes to use it.
Complainant's
Canadian trademark only protects its rights in Canada, and there is no evidence
that Complainant, a Texas-based publisher, even does business in Canada.
Respondent has
made demonstrable preparations to use <cars.biz>
in connection with a bona fide offering of goods or services. Respondent is using <cars.biz> in connection with a website about cars and has
developed a preliminary site. The site
is not yet developed because the domain name is on hold by the registry and is
subject to the STOP process.
Complainant has
failed to demonstrate any bad faith by Respondent in its use or registration of
<cars.biz>.
C. Additional
Submissions
Complainant's
additional submission alleges that Respondent failed to offer any allegations
or proof that its "demonstrable preparations" to use <cars.biz> occurred before notice
of the dispute.
Complainant
further alleges that Respondent had notice of Complainant's IP claim at the
time it offered to register <cars.biz>
and elected to register it notwithstanding such notice. This fact, coupled with its registration of
the other domain names cited in the Complaint, is strong evidence that
Respondent registered or seeks to register these names solely to warehouse them
for the purpose of selling, renting or otherwise transferring them for valuable
consideration in excess of its costs.
Respondent's additional
submission alleges that Respondent's notice of Complainant's IP rights does not
support an allegation of bad faith because the term CARS is so descriptive and
so generic as to preclude any person from acquiring the exclusive right to use
it as a trademark in connection with goods or services relating to cars. This completely eliminates any inference of
bad faith from Respondent's decision to register <cars.biz>.
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
Canadian trademark for CARS covers financial services, namely the purchase and
sale of receivables and the issuance to the public and the guarantee of debt
and equity securities. See, attachments to Complaint and
Complainant's Additional Submission. It
has no relevance whatever to and cannot be used as a mark for Complainant's
automotive consulting services or a newsletter about cars. In connection with services having to do
with cars, CARS is a generic or descriptive word and does not and cannot
qualify for trademark protection.
Complainant submitted no evidence to demonstrate that the name CARS has
become associated with Complainant such that it identifies Complainant or its
services in some unique way. See fabric.com v. Lin Zansong, FA 109701
(Nat. Arb. Forum, June 1, 2002) (“fabric” is generic, particularly in its use
by the Complainant selling fabric to Internet customers, and Complainant has no
protectable rights in the mark); see also Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat.
Arb. Forum Feb. 6, 2002) (dismissing
the Complaint because (1) the Complainant did not hold a registered trademark
in VVG, and (2) the Complainant did not demonstrate sufficiently strong
identification of its mark such that there would be recognition among Internet
users that the VVG mark identified goods or services unique to the
Complainant).
Based upon the
foregoing, the Panel finds and determines that Complainant has no rights in <cars.biz>.
Respondent claims
that it has a right or legitimate interest in <cars.biz> pursuant to Policy ¶4(c)(ii), which provides that
a Respondent can acquire such interest if it demonstrates, "before any
notice to the Respondent of the dispute, its use of, or demonstrable
preparations 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 evidence supporting this claim consists
of Respondent's allegation that it registered <cars.biz> with the intent to use it for a website about cars
and developed a preliminary site.
Response, p. 5, and Exhibit 1 to Joshua Blacker Declaration. Notwithstanding the requirement in Policy
¶4(a)(ii), and the clear invitation of Complainant in its additional submission
to do so, Respondent failed to tender any evidence that this work occurred
before notice to the Respondent of this dispute. It is not enough that a Respondent intended to use the name. It must provide some proof that it did so or
made demonstrable preparations to do so before it received notice of the
dispute. Respondent had notice of
Complainant's IP claim at least as of March 27, 2002 when it registered the
name. See, .BIZ Registry WHOIS Data.
From Respondent's allegations and the one-page exhibit consisting of a
"draft" website document attached to the Joshua Blacker Declaration
it is evident that Respondent took some action in preparation to use <cars.biz> in connection with a
commercial website offering information and services about cars. Completely absent is any evidence as to when
that work was done in relation to Respondent's notice of this dispute. See
Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o
establish rights or legitimate interests in a name or a mark, the Respondent
must do more than state that he considered using it in the past, along
with other names he actually used”) (emphasis in original). While the burden is initially placed on the
Complainant to show that a Respondent does not have rights or legitimate
interests in a domain name, after such a showing is made, the burden then
shifts to the Respondent “to explain by valid evidence a course of business
under the name, or at least significant preparation for use of the name prior
to learning of the possibility of a conflict.”
Gene Logic Inc., supra. A Respondent’s “unsupported, self-serving
allegations alone are insufficient to establish that [the] Respondent has
rights or 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) (finding the Respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue).
In the absence of
any evidence as to the chronology of relevant events, the Panel finds and
determines that Respondent has no right or legitimate interest in respect of <cars.biz>.
Since the
Complainant failed to demonstrate protectable rights in a mark identical
to <cars.biz>,
it is not necessary to determine if Respondent registered that name in bad
faith.
DECISION
The
domain name <cars.biz> is not
ordered transferred from Respondent to Complainant and the Complaint is dismissed. Pursuant to Policy ¶4(l)(ii)(3), subsequent
challenges against <cars.biz> shall
be permitted.
Honorable Charles A. Kuechenmeister
(Ret.)
Dated:
August 6, 2002
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