START-UP TRADEMARK OPPOSITION POLICY
Test.com Inc. v. -NA-Refer: optional address
Claim Number: FA0205000114356
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.
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.
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.
Transfer of the domain name from Respondent to 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.
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).
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.
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.
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
Dated: August 19, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page