Electronics For Imaging Inc. v. NobleNames.com
Claim Number: FA0205000114327
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.
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.
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
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.
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).
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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