START-UP TRADEMARK OPPOSITION POLICY
DECISION
Test.com Inc. v. -NA-Refer: optional
address
Claim Number: FA0205000114356
PARTIES
Complainant is Test.com
Inc., Cleveland,
OH, USA (“Complainant”) represented by Cynthia S Murphy, of Renner
Otto Boisselle & Sklar L.L.P. Respondent
is -NA-Refer: optional address, Barcelona, SPAIN (“Respondent”) represented
by Paz Martin, of HERRERO & ASOCIADOS. (The correct name of Respondent is REAL AUTOMOVIL CLUB DE
CATALUNYA (RACC) hereinafter referred to as RACC).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <test.biz>, registered with Nominalia Internet SL.
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.
Robert T. Pfeuffer, Senior District Judge
as Panelist.
PROCEDURAL HISTORY
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 20, 2002; the Forum received a hard copy of the
Complaint on May 20, 2002.
On July 11, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 31, 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 July 30, 2002.
Complainant submitted a timely Additional
Submission on August 1, 2002.
On August 8, 2002, pursuant to STOP Rule
6(b), the Forum appointed Robert T. Pfeuffer as the single Panelist.
RELIEF SOUGHT
Transfer of the domain name from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that it has common
law service mark rights in “test” for use in connection with the sale of
testing services by transmission over the internet or other electronic
means. It states that it has used the service
mark continually in interstate commerce since October 11, 1996. It further alleges that it has used the word
“test” over the internet at <test.com> but has failed to provide any
evidence of this assertion. Complainant
believes Respondent has no rights or legitimate interests in the name <test.biz>
because it could not find any registration in this country. In addition, Complainant believes the
registration by Respondent was in bad faith because it alleges material
misrepresentation in the IP claim filed by the Respondent and claimed it had a
registered trademark.
B. Respondent
Respondent sets out that it is a well
known automobile club with headquarters in Barcelona, Spain, that it is very
famous and well known as a service club for drivers and car enthusiasts in Spain
and provides services such as vehicle insurance, breakdown coverage, travel
information, etc. It has attached as
Exhibit “1” their Annual Report for the year 2001 and 2002. It further furnishes evidence of its
assertions in Annex “2” indicating the services provided to their associates
are done by telephone and Internet.
Respondent claims that RACC is also a foundation created in 1994 to
promote educational and research initiatives in the area of motoring and road
safety and to coordinate work and study groups on safety and intrastructures in
Spain and Europe. Its goals also
include the setup of new information campaigns aimed at users on environmental
and road safety issues and to make motorists aware of the need for rational and
sustainable driving. The Respondent has
offered Annex “4” indicating four (4) trademark registrations in Spain
utilizing the word “TEST”.
C. Additional
Submissions
After receipt of Respondent’s filing,
Complainant filed an additional submission on August 1, 2002 which was timely
received by the National Arbitration Forum and forwarded to the Panel. This additional submission was carefully
reviewed and considered in the Panel’s ultimate decision. The additional submission was not intended
as an amendment to the original Complaint, but states that no registration
number was listed in RACC’s IP claim.
Complainant states that the four trademark registration numbers for
“TEST” were only used with an accompanying design and none of the four
registrations appear to cover the term “TEST” used apart from an accompanying
design and are therefore not identical to the domain name at issue. It cites Newport
Corp. v. Newport Elecs., Inc. Complainant alleges that Respondent does not
contest Complainant’s rights over the trademark “TEST” in the United States and
that RACC is attempting to register <test.biz> in order to prevent
Test.com, Inc. from reflecting the mark in a corresponding domain name. The
Complainant also alleges that all of RACC’s actions in respect to the use of <test.biz>
demonstrate that its only goal in
registering that mark is to prevent others, such as Test.Com, Inc. from using
the domain name and that such goal is impermissible and evidence of bad faith
under STOP Rule 4(b)(ii).
FINDINGS
The
Panel finds as follows:
1. The
Complainant has used a service mark containing the name “test” in interstate
commerce since October 11, 1996.
2. That
its allegation of utilizing the term “test” to provide testing services over
the internet at <test.com> and via other electronic means is unsupported
by the evidence.
3. That
the real party in interest as Respondent in this claim is REAL AUTOMOVIL CLUB
DE CATALUNYA (RACC).
4. That
RACC registered four trademarks utilizing the term “TEST” with the appropriate
Spanish governmental authorities namely the Spanish Office of Patents and Marks
as shown in the Exhibits attached to the formal Response.
5. That
RACC is a well-known Spanish and European entity and that the trademarks utilizing
the term “test” were registered with the Spanish Office of Patents and Marks
and therefore acquired rights thereto when the marks were registered March 13,
1997.
6. The
Panel further finds that Complainant’s additional submission submitted August
1, 2002 was filed in a timely manner.
Attached to said additional submission is the IP claim submitted by
Respondent with which Complainant takes strong issue and in which Complainant
alleges its date of first use for the mark “test” was October 11, 1996.
DISCUSSION
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 Rights in the Mark
The Panel finds that the Complainant does
have rights in the mark under common law which were established October 11, 1996. Much like UDRP claims, a Complainant
may establish rights in its mark at common law. See Crazy Creek Prods.,
Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002)
(finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating
its common law rights in the CRAZY CREEK mark); but cf. Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat.
Arb. Forum Feb. 27, 2002) (finding that, in light of the U.S. Patent and
Trademark Office’s refusal to register Complainant’s mark because of the mark’s
generic-ness, the Complainant did not establish “protectable rights” in its
EFUTURES mark at common law); 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).
Respondent’s Rights or Legitimate
Interests
The Panel next must determine whether or
not Respondent has rights or legitimate interests in the subject mark.
The Respondent having demonstrated by
competent evidence that it has previously registered the mark “test” with the
Spanish Office of Patents and Marks in
1997 and further findings by this Panel that the marks are identical
notwithstanding the use by Complainant of the term “.com” and the proposed use
by Respondent “.biz”, the Panel finds that the Respondent has rights and
legitimate interests in the name “test” and therefore is required to dismiss
the Complaint. The Panel determines
that subsequent challenges to this domain name as against the Respondent under
the Stop Policy shall not be permitted against this domain name. A Respondent
may demonstrate its rights/interests in a STOP proceeding by proving that it is
the owner or beneficiary of a trademark or service mark that is identical to
the disputed domain name. The UDRP has
no such corresponding provision. See High Speed Prods. v. Blanco, FA
102951 (Nat. Arb. Forum Mar. 6, 2002) (noting that, although the result might
have been different had the Complainant’s case been brought under the UDRP, the
Respondent’s trademarks in THRASHER MAGAZINE, registered in Spain, sufficiently
demonstrate its rights and interests under STOP Policy ¶ 4(a)(ii) in the
<thrashermagazine.biz> domain name).
Having determined the Respondent has rights
and legitimate interests, the Panel need not address whether or not the
registration or use by Respondent was in bad faith.
DECISION
The Panel orders the Complaint dismissed
with prejudice and further finds that subsequent challenges to this domain
name, as against the Respondent shall not be permitted.
ROBERT T. PFEUFFER, Senior District
Judge, Panelist
Dated: August 19, 2002
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