START-UP TRADEMARK OPPOSITION POLICY
Meenam Logistics Services v. Tip Logistics
Claim Number: FA0205000114422
Complainant is Meenam Logistics Services, Navimumbai, INDIA (“Complainant”) represented by Mathiyavarnam M Thevar. Respondent is Tip Logistics, Tulsa, OK, USA (“Respondent”) represented by Chuck Adamson.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <logistics.biz>, registered with Registration Technologies, 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.
Judge Richard B. Wickersham, (Ret.) 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 29, 2002; the Forum received a hard copy of the Complaint on June 12, 2002.
On July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 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 August 1, 2002.
Complainant submitted an Additional Submission without, however, being accompanied by an Additional Submission fee, nor was the Additional Submission timely filed. Nonetheless, we have reviewed and given appropriate consideration to such Additional Submission.
On August 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham (Ret.) As the single Panelist.
Transfer of the domain name <logistics.biz> from Respondent to Complainant.
Complainant is Meenam Logistics Services and the domain name at issue is <logistics.biz>. Complainant cites several Registrations in India and contends that it is a well-known Logistics Service Providing Company for more than two decades.
The first use of the trademark “LOGISTICS” took place in 1996 when the company submitted a quotation to a leading company for providing logistic services.
Complainant suggests that the Respondent has no rights or legitimate interests in respect of the domain name <logistics.biz>, as (1) the registrant Tip Logistics is not an existing company; (2) the sole purpose of Tip Logistics is to sell the domain name for a consideration; and, (3) that the registrant has registered the domain name “LOGISTICS” for the ultimate purpose of selling the same for monetary benefit and, further, the registrant belongs to the club of cyber squatters, running a Cyber Shoppe with a variety of domain names for sale. Further, Complainant alleges that Respondent has registered the domain name <logistics.biz> in bad faith, primarily for the purpose of selling it for valuable consideration in excess of Respondent’s documented out-of-pockets costs directly related to the domain name.
Respondent argues that it is a legally established corporation under the laws of the State of Oklahoma, USA, and was incorporated as Tip Logistics on February 15, 2001.
Respondent further points out that it registered the domain name <logistics.biz> in good faith and with full intentions of providing content to the website <tiplogistics.com>. Respondent further advises that Complainant approached Respondent asking to consider selling the domain name and partnering with Complainant as a US partner.
Respondent denies being connected in any way with a cyber squatter or Cyber Shoppe selling domain names as alleged by the Complainant.
B. ADDITIONAL SUBMISSIONS
The Complainant has filed an Additional Submission as a further response to the Respondent which relates to the communications between Complainant and Respondent and negotiations relating to the paying a price for the domain name <logistics.biz>. It alleges that the Respondent has openly solicited a sales offer for the domain name under dispute.
Complainant contends that specified correspondence has established beyond doubt that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
FINDINGS AND 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
Upon a review of all of the evidence before it, the Panel finds that the Complainant, Meenam Logistics Services, is a well known Logistics Service Providing Company in India for more than two decades. Complainant first used the trademark “LOGISTICS” in accepting a purchase order for providing logistics services, January 9, 1996, to a company known as M/s. Larsen & Toubro Limited. Complainant therefore does have rights in the mark.
The Panel determines, however, that the Respondent has rights or legitimate interests in the disputed domain name. TIP LOGISTICS, INC. is a legally established corporation incorporated under the laws of the State of Oklahoma, USA, on February 15, 2001. We find that TIP LOGISTICS, INC. registered the domain <logistics.biz> in good faith and with full intentions of providing content to the following web site: <tiplogistics.com> and that such was to be used in accordance with a master plan. We find further that Complainant approached Respondent asking to consider selling the domain name and partnering with Complainant as a U.S.A. partner while Complainant was alleging to be seeking other partnerships in other parts of the world, such as China and Australia.
Respondent’s Rights or Legitimate Interests
We find that Respondent has rights and legitimate interests and, therefore, we will dismiss the Complaint and, further, we determine that subsequent challenges to this domain name, as against the Respondent, under the STOP Policy shall not be permitted against this domain name.
See K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate interests in the domain name <k2r.com> under UDRP ¶ 4(a)(ii) where he registered the domain name for a website in connection with his mother’s store, “KIRK ET ROSIE RICH”); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb.Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling ... the domain name to the Complainant’); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent); see also Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [Respondent] to offer to sell for a market price, rather than out-of-pocket expenses”).
The Panel finds that Complainant does have rights in the mark but we further determine that the Respondent has rights and legitimate interests in the disputed domain name. Accordingly, we hereby dismiss the Complaint and we further determine that subsequent challenges to this domain name <logistics.biz>, as against the Respondent, under the STOP Policy shall not be permitted against this domain name.
HON. RICHARD B. WICKERSHAM, (Ret. Judge), Panelist
Dated: August 21, 2002
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