Ruzicka - Bergfriede Corp. v. Reial Automobile Club de Catalunya a/k/a NA
Claim Number: FA0206000114498
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.
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.
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.
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
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