Ruzicka - Bergfriede Corp. v. Reial
Automobile Club de Catalunya a/k/a NA
Claim Number: FA0206000114498
PARTIES
Complainant
is Bergfriede Corp., Vienna, AUSTRIA
(“Complainant”) represented by Theophil
Ruzicka. Respondent is REAL AUTOMOVIL CLUB DE CATALUNYA,
Barcelona, SPAIN (“Respondent”) represented by HERRERO & ASOCIADOS.
The
domain name at issue is <web.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.
Herman
D. Michels 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 June 5, 2002; the Forum
received a hard copy of the Complaint on June 10, 2002.
On
July 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 22,
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 22, 2002.
On August 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Herman D. Michels
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
contends that it owns a trademark for .WEB used in connection with web hosting,
web solutions and to cover all trademarked web businesses according to the
registration certificate of the Republic of Austria trademark. .WEB was registered on May 6, 2002. Registration of .WEB is in Class 35,
advertising for third parties via Internet; Class 38 telecommunications,
especially the transmission of news, pictures, sound through Internet/intranet;
provision of technical communication access to databases (provider); mediation
of access to the Internet; and Class 42, web hosting, registration of domain
names; execution, design, operation and maintenance of web sites. Complainant is the owner of numerous marks
that include the term .WEB. Complainant
further contends that it has acquired extensive rights in numerous trade names,
trademarks and servicemarks including the mark .WEB.
Complainant
contends that Respondent’s domain name <web.biz>
is identical to its trademark .WEB and that Respondent has not acquired any
rights or legitimate interests with respect to the domain name.
Complainant
further contends that Respondent’s domain name is being used in bad faith in
that it was registered or acquired for a primary purpose of intentionally
attracting, for commercial gain, Internet users to Respondent’s web site or
other on-line locations and that Respondent was on notice as to the existence
of Complainant’s mark when it registered <web.biz>. Complainant
contends that its domain name is important in its business and that
Respondent’s registration of <web.biz> intentionally disrupts
Complainant’s business. Complainant
therefore seeks the transfer of the domain name registration <web.biz> from Respondent to
Complainant.
B. Respondent
Respondent
denies that Complainant owns a trademark .WEB that covers all trademarked web
businesses. It contends that it has
legitimate interest with respect to its domain name <web.biz>.
Respondent
further contends that it is a very famous and well-known services club for
drivers in Spain and develops its activities in the insurance assistance and
travel fields. Respondent contends that
most of its services are lent to its associates by telephone, and now more
recently, via Internet. It is also an
active member of different international institutions in the motor, mobility
and tourism areas. Respondent is a
foundation that was created in 1994 to meet the needs of its members in terms
of mobility. Some of its future aims
are to promote educational and research initiatives in the areas of mobility
and road safety, coordinate, as a member of the International Automobile
Federation, the strategies applied to Spain for European initiatives, set up
new information campaigns aimed at users on environmental road and safety
issues and make motorists aware of the need for rational and sustainable
driving. Respondent further contends
that it is working on an international web page that will be offering most of
their online services and that they are considering an easier domain name for
the European Union citizens by using the name <web.biz>. Respondent
contends that it has its own business on the Internet and sought the domain
name <web.biz> following the
rule of “first come, first served” because “web” is a generic term.
Respondent
further contends that it is impossible for it to ask for a “.es” domain name
because of specific rules of the Spanish domain name authority which forbid an
entity to ask for an “.es” domain name which coincides with certain words.
Respondent
further contends that the domain name <web.biz>
was registered in good faith, that the term “web” is just a generic term and a
descriptive word for it and that it has no intention or purpose of selling or
renting or otherwise transferring the domain name registration; that it has not
registered the domain name in order to prevent Complainant from reflecting the
mark and corresponding domain name; that it is not a competitor of Complainant
and that it has no intention of attracting for commercial gain Internet users to its web page by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation or
endorsement of the web site location.
Finally, Respondent contends that it wants to attract its own clients
and its main interest is to distinguish its own services from those of other
companies and that it is preparing its web site for a bona fide offering of
services under a generic second level domain name which has been registered in
good faith.
C.
Additional Submissions
Complainant, by way of additional response, contends
that before registering the domain name Respondent received mail from NeuLevel
with information about IP-claims and information about companies that show
preparation for bona fide businesses with their trademarks, including
Complainant’s. Complainant further
contends that Respondent has, in effect, accepted the existence of its
trademark rights to the .WEB domain name; that Respondent’s registration of the
domain name was in bad faith, particularly in view of the fact that it had
information from NeuLevel of Claimant’s Intellectual Property rights.
Complainant is the owner of a trademark
for .WEB used in connection for web hosting, web solutions and to cover all
trademarked web businesses. Complainant
registered the trademark WEB with the Republic of Austria on May 6, 2002. Additionally, Complainant is the owner of
numerous marks that include the term “web”.
Respondent’s domain name <web.biz> is identical to
Complainant’s trademark, .WEB. The
generic term <.biz> is irrelevant in determining whether or not a domain
name and mark are identical. See Princeton
Linear Assoc. v. Copland. FA102811 (Nat’l Arb. Forum Feb. 8, 2001).
Complainant has rights and legitimate
interests with respect to the trademark .WEB.
Respondent, on the other hand, has neither rights nor legitimate
interests with respect to the domain name <web.biz>. Respondent has
never been commonly known by the domain name and to date has not demonstrated
any legitimate, non-commercial or fair use of the domain name. Moreover, based on the evidence submitted in
this matter, it cannot be concluded that the domain name at issue is in any way
identified with or related to the legitimate interests of Respondent.
However, the Panel finds that WEB
standing alone is a generic term and that in order to show an exclusive right
to use the name, Complainant must produce sufficient evidence to show that WEB
is so established in the mind of the public with goods, products or services
that the term has acquired unique or secondary meaning. Complainant did not make this showing and
did not show that the mark itself is sufficiently well known to have acquired
national or international status. See computer.biz
v. Manski, FA 114300 (Nat. Arb. Forum Aug. 1, 2002) (finding that
“Complainant is using the word computer.biz generically to describe its
computer business, and it has failed to demonstrate sufficiently strong
identification of its mark to establish secondary meaning”); see also A.O.
Smith Corp. v. Rheem Solar Centre, FA 114389 (Nat. Arb. Forum July 31,
2002) (finding that Complainant, a water heater manufacturer, did not have
rights in HOTWATER even though it operated a website at <hotwater.com>
for six years because it failed to provide evidence of secondary meaning).
Where a trademark arises from a generic
word as it does here; and secondary meaning has not been established, as the
Complainant has failed to do here, the burden does not shift to Respondent to
prove exclusive right or interest but remains with Complainant to establish
that Respondent has no interests. See FreedomCard, Inc. v. Kim, D2001-1320
(WIPO Jan. 20, 2002) (“Were the trademark a well-known invented word having no
descriptive character, these circumstances would shift the onus to Respondent
to demonstrate its rights or legitimate interest in the disputed domain name...
[b]ut the mark FREEDOM CARD is a common generic expression in which the
Complainant cannot have exclusive rights”); see also Car Toys, Inc. v.
Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding
that Respondent has rights and legitimate interests in the domain name where
Complainant submitted insufficient evidence to establish either fame or strong
secondary meaning in the mark such that consumers are likely to associate
<cartoys.net> with the CAR TOYS mark); see also CRS Tech. Corp. v.
Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that
“concierge is not so associated with just one source that only that source
could claim a legitimate use of the mark in connection with a website”) and
Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000)
(“given the generic nature of the domain name, [Respondent] has at least a
tenable argument that its use on the web merely for the purpose of redirecting
visitors to a different site constitutes a legitimate fair use, as long as this
use is not misleading to consumers and does not tarnish a trademark”)
The Panel finds, therefore, that
Complainant has failed to show that Respondent has no rights in the disputed
domain name. See London Special Risks Ltd. v. Wooho T&C d/b/a RGnames,
FA 112505 (Nat. Arb. Forum July 31, 2002) (finding that, although Complainant
held rights in the ANGEL mark and Respondent had not proven its rights in the
<angel.biz> domain name, Complainant failed to affirmatively prove
Respondent’s lack of rights in the domain name).
Accordingly, the Panel finds that
Complainant has failed to show that Respondent has no rights and legitimate
interests in the disputed domain name. The Panel declines to find that
Respondent has such rights under STOP Policy 4(a)(ii) but finds that STOP
Policy 4(a)(ii) has not been satisfied.
In
the circumstances here present the registration of the domain name, <web.biz>,
does not constitute bad faith. There
was no proof in this record that Respondent registered the domain name primarily
for the purpose of selling, renting or otherwise transferring it to Complainant
for a valuable consideration in excess of Respondent’s out of pocket costs
directly related to the domain name or that Respondent registered the domain
name for the purpose of preventing Complainant from registering domain names
that reflect its mark or that Respondent registered the domain name primarily
for the purpose of disrupting the business of a competitor. Complainant’s unsupported charges are not
sufficient to establish that the domain name was registered or being used in
bad faith. Moreover, the term WEB is
generic and there is no evidence that Respondent registered that domain name
with the intent of capitalizing on Complainant’s mark. See Lumena s-ka zo.o v. Express Ventures,
Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000).
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.
The
domain name <web.biz>
registered by Respondent is identical to the trademark/servicemark in which
Complainant has rights and legitimate interests.
Complainant has failed to prove that
Respondent does not have any rights or legitimate interests in the domain name
<web.biz>.
Based on the record submitted,
Complainant has failed to prove that the domain name <web.biz> registered by Respondent has been registered in bad
faith.
DECISION
Accordingly,
the Complaint in the above-entitled matter is hereby DISMISSED. Subsequent challenges under the STOP Policy
against this domain name SHALL BE permitted.
Herman D. Michels, Panelist
Dated: August 23, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page