computer.biz v Thomas Manski
Claim Number: FA0205000114300
PARTIES
Complainant
is computer.biz, Piscataway, NJ
(“Complainant”) represented by William
Montgomery. Respondent is Thomas Manski, Fort Walton Beach, FL
(“Respondent”) represented by Ari Goldberger.
The
domain name at issue is <computer.biz>,
registered with SITENAME.COM, LLC.
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.
David
P. Miranda, 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 16, 2002; the Forum
received a hard copy of the Complaint on May 17, 2002.
On
May 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 12,
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 June 12, 2002.
Complainant’s
additional submissions were received on June 18, 2002. Respondent’s additional submissions were
received on June 25, 2002.
On July 18, 2002, pursuant to STOP Rule 6(b), the Forum
appointed David P. Miranda
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
Complainant contends that it has common law trademark rights to “computer.biz”
based upon its use and registration of that name as a tradename with the
Middlesex County Office Clerk’s Office in the State of New Jersey on February
27, 2001 for computer sales, services, upgrades, computers parts and networking;
and has used the name “computer.biz” in its website is located at
<computerdotbiz.com> since September 2001. The Complainant contends that the Respondent received
notification of the .biz Intellectual Property claim conflict from NeuLevel
providing formal notification of complainant’s IP claim, prior to registration
of the <computer.biz> domain.
The Complainant contends that the Respondent may have registered the
domain for the bad faith purposes of selling, or renting or otherwise
transferring the domain name registration to the Complainant or to a competitor
of the Complainant. The Complainant
contends that the Respondent previously registered <sportspepsi.com>, the
word PEPSI is a registered trademark of PepsiCo, Inc., and on at least in one
occasion Respondent invited anonymous bids to purchase the domain name,
<sportspepsi.com>.
B.
Respondent
The
Respondent contends that Complainant has no basis for common law trademark
rights to “computer.biz” because the disputed domain name incorporates the
common word “computer” which is generic.
The Respondent contends that Complainant is using the name
“computer.biz” generically because Complainant’s business is basically buying
and selling used computers. The Respondent contends that prior to registration
of the domain he never heard of the Complainant and registered the domain <computer.biz>
for the purpose of a website that has news about and links to computer
hardware, computer software, the Internet and computer services. The Respondent provides copies of a
preliminary website it has developed for <computer.biz>. The Respondent admits that it registered the
domain <sportspepsi.com> for the purpose of presenting it to Pepsi for
commercial purposes. The Respondent
also contends that the prior offer for sale of <sportspepsi.com> was made
by Register.com and not by Respondent. Respondent contends that Complainant is
engaging in reverse domain name hijacking.
C.
Additional Submissions
Also
received were Complainant’s Additional Response and Respondent’s Additional
Response submitted in accordance with the Forum’s STOP Supplemental Rule No.
7. These additional submissions were
carefully reviewed and considered for the purposes of this decision. The Complainant contends that the Respondent
has committed “perjury” in its Response and all Respondent’s allegations and
statements should be regarded as being unsupported. The Complainant contends that the Respondent did in fact have
control over the website <sportspepsi.com> and has engaged in the practice
of registering domain names containing trademarks of others. The Complainant further contends that the
tradename computer.biz is distinctive in identifying its goods and services and
there is strong customer identification in Piscataway, New Jersey where
Complainant has used the mark, citing to activities that include flyers in the
community, using the name <computerdotbiz.com> as its domain, joining the
local Chamber of Commerce and sponsoring the Piscataway Little League.
In
it’s Additional Response, Respondent denies having committed perjury himself
because the Complainant has not established that Respondent has made any false
statement. The Respondent further
argues that Complainant’s use of the word computer is generic and the evidence
submitted by Complainant is not sufficient to establish distinctiveness.
Because Complainant has not sufficiently
established trademark rights in the mark computer.biz, the Complaint must be
dismissed. First, Complainant does not
hold a registered trademark in computer or computer.biz. Second, Complainant has failed to
demonstrate that the mark has acquired secondary meaning in relation to the
Complainant such as to common law rights to the mark. Respondent has failed to
establish any rights to or legitimate interests in the domain name.
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
domain name <computer.biz> is identical to the name which
Complainant claims rights to. The
Complainant does not have a trademark registration for “computer.biz” or
“computer” and has failed to establish secondary meaning such as to establish
common law rights to the name.
For
trademark purposes, a top level domain, such as .biz does not have any
source-indicating significance. Those
designations are merely devices that every Internet site provider must use as
part of its address and the average person familiar with the Internet
recognizes the format or domain name and understands that the top level domain
.biz is a part of every URL. Trademark
Manual of Examining Procedure, Section 1215.02 (TMEP 3rd Edition,
Rev. June 2002).
Complainant
has a difficult burden to meet in order to establish common law trademark
rights to a common word such as “computer.”
Generic terms must be analyzed in connection with the kind of products
or services identified with the mark.
So for example, the word “apple” is not generic when used to identify
computers but it would be generic if used to identify apples. “A generic term can achieve distinctive
force when due to its use and recognition by the consuming public the word
obtains a secondary meaning that allows it to identify products or services
without any risk of confusion in the market.
In this case the generic term can become a trademark.” Dana Chase
Publications v. RGNAMES, FA 112441 (Nat. Arb.Forum 2002). To this end Complainant must prove that its
use of its name has added to the generic term such recognition among consumers
that it is immediately identified by consumers with its products or
services. In this case the Complaint is
using the word computer.biz generically to describe its computer business, and
it has failed to demonstrate sufficiently strong identification of its mark to
establish secondary meaning. Although a
Complainant in a proceeding such as this may establish common law rights to a
mark, it has failed to do so here.
The only rights or legitimate interests that the
Respondent claims to the disputed domain name is based upon its alleged
preparations to use the domain name in connection with the bonafide offering of
goods and services, namely a website about computers. In support of its contention that it plans to use the domain name
for a website about computers, it provides the Affidavit of Thomas Manski,
stating that he developed the website for computer.biz which will be hosted at
the URL <computer.biz> once this
proceeding is resolved. In support of
this contention copies of several pages from what appears to be a website
located at the domain <newdogsnewtricks.com> from June 11, 2002 are
attached as an Exhibit to Respondent’s papers.
Under
the STOP Policy paragraph 4 (c) the Respondent may demonstrate its rights or
interest in domain name by proving, that before any notice to the Respondent of
the dispute, its use of or demonstrable preparations to use, the domain name or
name corresponding to the domain name in connection with a bonafide offer of
goods and services. Although the
operation of a website may fulfill the “use of or demonstrable preparations to
use” requirement of the STOP Policy, Respondent has failed to establish or even
allege that it began its preparations “before any notice to the Respondent of
the dispute”. In this case the print
out of the Respondent’s proposed web page is dated June 11, 2002 and the
Complaint was filed on May 16, 2002.
Furthermore, notice was provided to Respondent of the Complainant’s
claim as early as March 12, 2002 when it received notification of the .biz
Intellectual Property Claim Conflict.
Respondent has failed to provide or even allege use or demonstrable
preparations to use the name prior to either of those dates. Thus, Respondent
has failed to establish any rights or legitimate interest in the domain name.
As contended by Complainant, Respondent
has registered many domain names, some of which are similar or contain the
trademark of others and some of which have been offered for sale. Apparently, a domain registered with Register.com
is provided with a “Coming Soon” page which among other things, solicits offers
for sale of the domain name. This
“Coming Soon” page was in use for Respondent’s domain <sportspepsi.com>.
While the Respondent did not commit “perjury” as contended by Complainant, he failed to acknowledge his ability to
disable the “Coming Soon” page. A finding of whether the Respondent has acted
in bad faith with respect to this domain name is not required, since the
Complaint has been dismissed. Under all
the circumstances it is conceivable that a subsequent challenge could establish
Respondent’s bad faith.
Finally, Respondent contends that
Complainant has engaged in “reverse domain name hijacking”. In accordance with STOP Rule 1, reverse
domain name hijacking means using the STOP Policy in bad faith to attempt to
deprive a registered domain name holder of a domain name. This is a serious charge that should not be
alleged without factual support. There is no evidence that Complainant acted in
bad faith in bringing this Complaint. Complainant has not engaged in “reverse
domain name hijacking” in this proceeding.
DECISION
Complainant’s Complaint is hereby dismissed
for failure to establish common law trademark rights to computer.biz. Respondent has failed to establish any
rights or legitimate interest in the domain name and subsequent challenges
under the Policy against this domain name shall be permitted.
David P. Miranda, Panelist
Dated August 1, 2002
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