Electronics For Imaging Inc. v.
NobleNames.com
Claim Number: FA0205000114327
PARTIES
Complainant
is Electronics For Imaging Inc.,
Foster City, CA (“Complainant”) represented by Susan L Heller, of Loeb
& Loeb LLP. Respondent is NobleNames.com, Fremont, CA
(“Respondent”) represented by Michael A
Thomas.
The
domain name at issue is <efi.biz>,
registered with DomainPeople, Inc.
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.
John
J. Upchurch 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 May 17, 2002; the Forum
received a hard copy of the Complaint on May 20, 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
late Response was received and determined to be complete on June 13, 2002.
Complainant
submitted a timely Additional Submission on June 14, 2002. Respondent submitted a timely Additional
Submission on June 16, 2002.
On July 18, 2002, pursuant to STOP Rule 6(b), the Forum
appointed John J. Upchurch as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
1.
Excluding the .biz extension, <efi.biz> is identical to
Complainant EFI’s registered
service mark EFI. STOP Rule 3(c)(ix)(1); STOP ¶4(a)(i).
2.
The Respondent has no rights or legitimate interests in <efi.biz>.
STOP Rule 3(c)(ix)(2); STOP ¶ 4(a)(ii).
Respondent is not the owner nor the beneficiary of any trademarks or
service marks identical to the domain name in dispute. STOP ¶ 4(c).
3. The domain name <efi.biz> was registered and/or used in
bad faith. STOP Rule 3(c)(ix)(3); STOP
¶ 4(a)(iii). Respondent has registered
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain registration to EFI or to a competitor of EFI, for
valuable consideration in excess of Respondent’s documented out-of-pocket costs
directly related to the domain name.
Respondent’s website, <NobleNames.com>, appears to be nothing more
than an auction site for domain names.
B.
Respondent
1. Complainant asserts that: “Excluding the .BIZ extension, <efi.biz>
is identical to Complainant
EFI’s registered service mark EFI.” Respondent
does not dispute this allegation.
2. Although Respondent is neither the owner nor the
beneficiary of any trademarks or service marks identical to the domain name,
Respondent applied for registration of the <efi.biz> domain name
with the intent of developing a service for providing guided tours of Florence,
Itlay. Respondent’s wife, whose name is
Elizabeth, and who is a native of Florence, Itlay, would have managed this business
under the dba “Elizabeth’s Florence Itineraries” hence the domain <efi.biz>. However, shortly after pre-registration of
this business fell through, Respondent’s and Respondent’s wife’s plans for this
business fell through, and the site was not developed. As this business was in its conceptual
stage, and would not have required any external capital, there never was a
business plan or other document outlining the intended use of this domain.
3. Respondent operates the
website <NobleNames.com>. This
does not constitute proof that Respondent intended to sell the domain through
the NobleNames web site.
C.
Additional Submissions
1. Complainant
a. Respondent concedes that EFI has irrefutable trademark rights in the
“EFI” name, and recognizes the fact that the disputed domain name, <efi.biz>,
is identical to EFI’s trademark name.
b. Respondent is neither the owner nor the beneficiary of any trademarks
or service marks identical to the <efi.biz> domain name.
c. Respondent’s alleged contract to sell the <efi.biz> domain
name to a “Force-EFI” is indictative of Respondent’s bad faith intentions with
respect to <efi.biz>, because Respondent had no rights in the <efi.biz>
name at the time he allegedly contracted to sell it; the <efi.biz>
domain name was placed “on hold” by NeuLevel as of April 8, 2002, in respect of
EFI’s validly asserted Intellectual Property Claims.
d. The omission of the <efi.biz> domain name from the
current NobleNames.com web site does nothing to disprove Respondent’s bad faith
intentions to auction off this domain name.
The domain name is registered to NobleNames.com, a web site operated by
Respondent on which Respondent is selling domain names.
2. Respondent
a. The duty of the tribunal is to determine whether Respondent has
rights- any rights- not who’s rights are greater. By the wording of the STOP rules element (ii) applies if
“Respondent has no rights or legitimate interests in respect of the
domain name.”
b. Complainant’s allegation that
“Respondent’s …contract to sell the <efi.biz> domain name
to…Force-EFI…is indicative of Respondent’s bad faith intentions…” is frivolous
and misleading.
c. Complainant has presented no proof of any bad faith registration or
use, no proof of Respondent ever trying to sell the domain to Complainant or
its competition, and no proof that Respondent ever wanted to get more than a
reimbursement of its out-of-pocket costs to transfer the domain to anybody.
The Panel finds in favor of the Complainant
and that the registration of the disputed domain name should be transferred to
the Respondent.
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.
a.
Complainant is the current owner of the service mark EFI including a
federal service mark registration in international class 9 for “computer
hardware, computer software and computer peripherals for image processing,
image editing, graphics or printing; and manuals sold as a unit.” EFI filed for registration of this service
mark on March 26, 1993, and the mark was registered on March 14, 1995. EFI’s use of this mark extends back to March
4, 1991, with a first use in commerce date of May 31, 1991.
b.
Complainant has created a
website at the domain name <efi.com> which it registered on August
2, 1989.
Respondent demonstrated no credible
evidence that would establish rights or legitimate interests in the domain
name. The assertion regarding
Respondent’s agent’s wife with respect to guided tours of Florence, Italy is
patently ridiculous, and was accompanied by absolutely no corroborative
evidence, not even an affidavit in support of this fanciful claim.
The domain name <efi.biz> is
registered to NobleNames.com, a web site operated by Respondent on which
Respondent is in the business of selling domain names. This circumstance, coupled with the utter
absence of any right or interest in the mark on the part of Respondent meets the
threshold test of bad faith. Panels have
found bad faith where no offer of sale is made, but where it is clear that
Respondent’s only interest in the name is to sell it. See Euromarket
Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000).
DECISION
The Panel finds in favor of the
Complainant, and hereby transfers the domain name <efi.biz> to
Complainant. Subsequent challenges
under the STOP Policy against this domain name shall not be permitted.
John J. Upchurch, Panelist
Dated: August 19, 2002
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