Alaska Communications Systems Holdings Inc v. InfoSiteServer
Claim Number: FA0205000114363
Complainant is Alaska Communications Systems Holdings Inc, Anchorage, AK (“Complainant”) represented by Stephen J Shephard. Respondent is InfoSiteServer, Saipan, MP (“Respondent”) represented by Bill Bezzant.
The domain name at issue is <Alaska.biz>, registered with BB Online UK Limited.
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.
Judge Irving H. Perluss (Retired) is the 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 June 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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 27, 2002. It will, however, be considered by the Panel.
On July 12, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
1. Alaska Communications Systems is a registered service mark noting “A full-service telecommunications company providing residential and business telecommunications and wireless digital service; providing local telephone service, long distance service, wireless service, Internet service and data communications services; offering communications satellites, video conferencing, direct fiber optic undersea links, hosting and messaging; all in International Class 38.” It was first used October 13, 1998, and first used in commerce May 14, 1999. The United States Patent and Trademark Office’s registration number 2,513,541 was granted November 27, 2001.
2. Technology for Alaska’s Future is a registered International Class 38 service marking noting “telecommunications services, namely, electronic transmission of voice, data, facsimile and video via copper wires, fiber optic cables and radio communication; facsimile transmission services; cellular telephone services; audio and video teleconferencing services; and customized calling services; in the nature of caller-id; call waiting; call forwarding; facility reservation; conference calling; voice messaging; and Integrated Services Digital Network (ISDN) services. It was first used March 3, 1997, and first used in commerce March 3, 1997. The United States Patent and Trademark Office’s registration number 2, 199,642 was granted October 27, 1998. Originally the mark was registered to Municipality of Anchorage dba Anchorage Telephone Utility Instrumentality Alaska and was assigned to Alaska Communications Systems, Inc. on May 14, 1998.
3. <Alaska.net> is a domain name owned and used by ACS to host sites for Alaska-based business; first registered June 9, 1994.
4. Alaska Communications Systems has built significant “good will and consumer recognition” for itself through use of the word “Alaska,” including through the Internet medium. Not only has this been accomplished through the legitimate use of domain names built on the word “Alaska,” but also through its own name of incorporation, and various marketing campaigns.
5. Complainant can demonstrate a history of selling goods and services in Alaska. There is no doubt that Complainant will develop this domain name for commercial benefit for the State of Alaska.
6. Complainant can find no evidence that Respondent holds legitimate rights to or interest in the disputed domain <Alaska.biz>. Respondent has not demonstrated a legitimate intent to use the <Alaska.biz> domain name. Respondent cannot claim to be commonly known by this domain name.
7. At the time of registration, Respondent has not demonstrated a use of the domain name in good faith. The InfoSiteServer website, <InfoSiteServer.com>, lists hundreds of domain names in Respondent’s possession. Many sampled domain names from this online list are not being used for their stated purpose.
8. Respondent registered the disputed domain name in bad faith. Respondent has no business in Alaska, conducts no marketing efforts in Alaska, nor offers any services in Alaska. Respondent is diluting the Complainant’s service mark, registered with the USPTO since 1999. Respondent has no connection with the goods and services, which have come to be known by nearly 500,000 people to whom Complainant provides goods and services.
9. The disputed domain name is identical to a domain name already possessed by Complainant <Alaska.net> first registered on June 9, 1994.
10. Respondent is clearly aware of the potential resale value of this domain name.
11. If left in the hands of Respondent, this domain may very well end up as another domain name in a list of thousands that are unused and waiting for secondary purchaser, which would be a clear violation of the Anticybersquatting Consumer Protection Act.
12. Respondent’s statement of intent to build its published, extensive holdings of domain names into separate websites as “business directories” represents an inconceivable amount of work for the Respondent, such that it casts doubt on the plausibility of their stated intent. Taking their statement into consideration for one domain name may form a rational argument, but keeping in mind that this argument would be used for hundreds of drastically diverse domain names must also be considered and weighed in considering the statement’s credibility.
1. Respondent has not infringed on the service marks of Complainant, in that the Complainant does not have an exclusive mark on the name “Alaska,” and the fact that the Complaint has registered an “Alaska” domain name in another top-level domain does not provide Complainant the pre-eminent right to exclude Respondent from registering and using <Alaska.biz> in the <.biz> top-level domain.
2. Complainant’s registration of a trademark “Alaska Communications Systems” would entitle the Complainant to preference for the domain name <alaskacommunicationssystems.biz>, but should have no bearing on <Alaska.biz> which is substantially different from the trademarked name “Alaska Communications Systems.”
3. Complainant’s registration of a trademark “Technology for Alaska’s Future” would entitle Complainant to preference for the domain name <technologyforalaskasfuture.biz>, but should have no bearing on <Alaska.biz> which is substantially different from the trademarked name “Technology for Alaska’s Future.”
4. A search of live trademarks at the U.S. Patent & Trademark Office indicates that there are 213 live trademarks incorporating the word “Alaska.” Complainant’s use of the word “Alaska” in its own trademark was not precluded by other pre-existing trademarks, nor have Complainant’s trademarks precluded others from also incorporating the word “Alaska” into other trademarks. Complainant therefore does not have exclusive right to use of the word “Alaska.”
5. Respondent has rights to use of the domain name <Alaska.biz> which is the subject of this STOP complaint because the word “Alaska” is a generic term, which the Respondent has successfully registered with the NeuLevel TLD registry. Respondent has an active business plan for legitimate business use of the <Alaska.biz> domain name, for delivery of business directory and travel destination information having to do with the Alaska geographic region.
6. Respondent did not register the disputed domain name in bad faith because Respondent is not in the business of selling domain names, and has never sold a domain name in the past. Moreover, Respondent has never had any contact with the Complainant at any time any regard prior to receipt of this Complaint. Respondent has never had any contact from or with any other party for discussion or offer of sale of <Alaska.biz>. Respondent is unaware of any resale value of <Alaska.biz> could have, and it sought registration of the domain name to bolster Respondent’s plan of preparing travel and business directories having to do with the Alaska geographical region.
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.
STOP Policy ¶4(a)(i)
This proceeding requires summary disposition.
This is because, unlike domain name disputes brought under the UDRP, STOP claims require that the disputed domain name be identical to a trademark or service mark in which the Complainant holds rights. A domain name that is merely confusingly similar to a mark cannot be transferred through a STOP claim (although the holder of a non-identical but similar mark could bring a UDRP complaint when the domain name eventually clears any other pending STOP complaints). See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).
Complainant’s service marks are “Alaska Communications Systems” and “Technology for Alaska’s Future.” Clearly, these marks are not “identical,” i.e. the “self-same,” to <Alaska.biz>.
While Complainant is the owner of the domain name <Alaska.net>, our inquiry is whether Complainant’s marks (and not its domain names) are identical to the disputed domain name.
The Panel finds and concludes that Complainant has not established the required first prong of “identical” to a trademark or service mark in which the Complainant has rights and its Complaint must be dismissed.
STOP Policy ¶4(a)(ii)
Despite the failure of Complainant to prove that its service marks are identical to the disputed domain name, the Panel must determine whether Respondent has rights or a legitimate interest in the disputed domain name.
STOP Policy ¶4(c) functions similarly to UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or legitimate interests in a domain name.
Under STOP Policy ¶4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fid offering of goods or services;
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Respondent has submitted no evidence whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panel finds and concludes that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent contends that it has made demonstrable preparations to use the subject domain name in connection with the compilation of Alaska travel information.
The Panel believes that Respondent has not made a sufficient showing of “demonstrable preparations to use” before notice of the dispute so as to comply with ¶4(c)(ii), and it is so found and concluded.
STOP Policy ¶4(a)(iii)
The Panel has concluded that the registration of the disputed domain name was not in “bad faith” under the Policy. This is because the name “Alaska” is a geographically descriptive term, and a trademark of such a term, without more (i.e., a secondary meaning) does not create a legally protectable interest.
Professor McCarthy states in his treatise Trademarks and Unfair Competition (2002 Update) §14.1 at 14-3, 14-4:
Terms that are descriptive of the geographic location or origin of goods and services are regarded by the law as not being ‘inherently distinctive’ marks. Since geographically descriptive terms are not inherently distinctive, they can be protected as trademarks only upon proof that through usage, they have become distinctive. Such an acquisition of distinctiveness is referred to as ‘secondary meaning.’
* * * * *
In other words, geographically descriptive marks, without more, are not specific or distinctive enough to pinpoint a certain seller and to identify and distinguish his goods from those of others. Geographically descriptive terms are placed in the same category as terms that are descriptive of some quality or feature of goods. That is, a descriptive geographic adjective can be truthfully applied to a wide range of goods and services that emanate from or are connected with a certain geographical location. Thus, a geographically descriptive term cannot, per se, function to identify and distinguish the goods of only one seller in that geographic location.
A parallel rationale states that descriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods. Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain.
Since the name “Alaska,” without more, is in the “public domain,” its registration of it as a domain name by Respondent was not in bad faith.
It is the decision of the Panel, based on his findings and conclusions, that the Complaint herein shall be, and hereby is dismissed. Subsequent challenges against the disputed domain name shall be permitted.
JUDGE IRVING H. PERLUSS
Dated: July 24, 2002
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