Dice Inc. v. Dice Multimedia Europe B.V.
Claim Number: FA0205000114360
Complainant is Dice Inc., New York, NY, USA (“Complainant”) represented by Brian Campbell. Respondent is Dice Multimedia Europe B.V., Amsterdam, NETHERLANDS (“Respondent”) represented by Dick Elberse.
The domain name at issue is <dice.biz>, registered with Ascio Technologies Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Estella S. Gold 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 June 27, 2002.
On July 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 23, 2002.
On August 3, 2002, pursuant to STOP Rule 6(b), the Forum appointed Estella S. Gold as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant alleges that DICE is a registered trademark of its wholly owned subsidiary, Dice, Inc. Complainant also alleges that it has been commonly known by the Dice name, and that Respondent’s use of the domain name <dice.biz> lacks a connection with a bona fide offering of goods and services. Complainant argues that the Respondent has registered the domain name <dice.biz> in order to prevent the Complainant from doing so.
Respondent acknowledges that <dice.biz> is identical to the United States Trademark Registration of the Complainant. Respondent contends that it has a legitimate interest in the domain name <dice.biz> through the use of the trade name Dice Multimedia Europe B.V. as well as Respondent’s use of the trademark and service mark, DICE, in connection with bona fide offering of goods and services on the web site <dice.nl>. Respondent is in the business of distribution, production, licensing and sale of multimedia products, a non-competing entity with Complainant.
The following facts are undisputed:
(1) Complainant has a United States registered trademark “Dice”;
(2) Respondent admits that the registration of <dice.biz> is identical to Complainant’s mark;
(3) Complainant actively uses the mark “Dice” in commerce, including, but not limited to, its domain name <Dice.com> through affiliates;
(4) Complainant has used the “Dice” name since 1990;
(5) Respondent shows use of the Dice name in combination with other words (such as “Dice Computer Games,” “Dice Video,” and “Dice-DVD” in commerce since 1996; and
(6) The only use of “Dice” alone is the domain name owned by the Respondent of <dice.nl>, in use since 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 has well established rights in the mark through its registered trademark “Dice,” as well as its usage of the mark in the United States. Therefore, the issue to be resolved is whether or not Respondent has rights or legitimate interests in the disputed domain name <dice.biz>.
A Respondent may demonstrate its rights or interests in a domain name by proving that it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii).
The Respondent may demonstrate its rights or interests by proving before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Although Respondent has shown no registration of the trademark “Dice” standing alone, Respondent does show continuous use of the mark “Dice” alone, in commerce, through its use of the domain name <dice.nl>.
Although Respondents may not have made actual use of a registered “.biz” name prior to the filing of a STOP Complaint, Panels have found that, where the Respondent operated a website at a virtually identical domain name, such use may fulfill the “use of, or demonstrable preparations to use” test of STOP Policy ¶ 4(c)(ii). See Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent continuously operated a website at <americanway.com> for over five years in connection with the sale of its video series “The American Way of Training Hunters & Jumpers,” such activity satisfied the requirements of STOP Policy ¶ 4(c)(ii) in regard to the identical domain name <americanway.biz>).
Since Respondent has a legitimate interest in the mark, the Panel therefore shall dismiss this Complaint, and the subsequent challenges to the domain name <dice.biz>, as against the Respondent, under STOP Policy shall not be permitted.
For the reasons set forth above, the Complaint is dismissed, and subsequent challenges to the domain name <dice.biz>, as against Respondent, shall not be permitted against this domain name.
Estella S. Gold, Panelist
Dated: August 15, 2002
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