Gard Engineering v. Ismer
Claim Number: FA0206000114526
PARTIES
Complainant
is Gard Engineering, San Mateo, CA,
USA (“Complainant”). Respondent is Ismer, London, UNITED KINGDOM (“Respondent”)
represented by Peter Norton, of Bazley White & Co.
The
domain name at issue is <land.biz>
(hereinafter the “Domain Name”), registered with Phillipine Registry.com, 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.
Hugues
G. Richard 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 7, 2002; the Forum
received a hard copy of the Complaint on June 10, 2002.
On
June 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
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 12, 2002.
Complainant’s
Additional Submission was received and determined to be complete on July 16,
2002. Respondent’s reply was received
on July 21, 2002.
On July 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hugues G. Richard
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
The
Complainant contends, inter alia,
that :
· the Respondent's domain name <land.biz> is
identical to Complainant's trademark/name LAND.BIZ;
· the Respondent made no use of the domain name prior to having
been granted the said Domain Name by the Registry Operator;
· the potential disruption to Complainant's trade is going to be
astounding;
· the application with the United States Patent and Trademark
Office of the trademark LAND.BIZ (Exhibit A) defines lawfully, Complainant's
first attempts at use of the trademark;
· LAND.BIZ is one of a set of names he uses, these other names
are 1STARDRIVE, 4SALE.BIZ, LAND.BIZ, REALESTATE.BIZ and SCUBA.BIZ (Exhibit C);
· LAND.BIZ trademark/name has been in use for enough time to be
noticed by top Internet search engines (Exhibit G);
· the goods and/or services with which he has and intends to use
the trademark LAND.BIZ in the future [sic] are to certify, verify, inform, sell
goods and services, trade goods and services, buy goods and services, list
events, arrange tours and/or all other lawful enterprises of any type he may
engage in regarding land as it is defined under real property on and off the
Internet;
· a California court issued an injunction in a lawsuit where it
was alleged among other things, that the method for assigning domain names
during the start-up period constitute an illegal lottery under California law.
All actions after that were made in bad faith because they seem to have the
intent to circumvent a lawful California injunction;
· Registry Operator, NeuLevel Inc., a United Sates company, acted
in bad faith by assigning domain names that the Complainant has lawfully
claimed;
· to the best of his knowledge and research, the Respondent has
never used nor registered the Domain Name;
· by using the Domain Name, the Respondent is intentionally
attempting to attract for commercial gain, Internet users to the Respondent's
Web site;
· the word “Land” is in the public domain. ComputerLand,
BusinessLand and MusicLand have all used land in their trademarks/names. “Biz”
as in ShowBiz, MusicBiz, PropertyBiz, Biz soap and many other biz
trademarks/names with biz are present and also in the public domain. The dot
(.) character is equally in the public domain;
· multiple entities seem to be involved, thus willfully colluding
and conspiring to dilution of Complainant's trademark/name.
B.
Respondent
The
Respondent contends, inter alia, that
:
· the Complainant commenced use of the logo LAND.BIZ some six
months after announcement, in November 2000, that a new “.biz” gTLD’s would be
available for registration thereby engaging in an act of reverse domain name
hijacking. He adds that Complainant only included the LAND.BIZ logo on his site
in April 2001 a month before the start of the IP claims process, on May 21,
2001;
· the fact that Complainant uses a generic word and “.Biz” after
each word culminating in the logos LAND.BIZ, SCUBA.BIZ and REALESTATE.BIZ
indicates that Complainant included these logos on his site with the sole aim
of obtaining the corresponding domain names;
· it is no coincidence that these logos were used shortly after
the announcement that “.Biz” domain names would be issued and shortly before
the commencement of the IP claim applications.
All this when e-commerce and domain names were of interest and a hot
topic to many. <REALESTATE.BIZ>
is one of the domain names promoted by Neulevel on its main web page under
“ways to use .Biz” and which Complainant also uses as a mark;
· if Complainant completed a search of Google for the name “land”
instead of LAND.BIZ then he would have found that it returns 32,600,000
results, and that such results do not indicate exclusive rights to the common
English word “land”;
· if a Web site is submitted to a search engine, the search engine
registers the site and the text on the site.
Very few results appear in search engine searches for LAND.BIZ as the
domain name is not yet hosting a developed site as it is locked until IP claims
are complete;
· what the Complainant has done is equivalent to using the logo
LAND.COM prior to the issue of the .com domain name in order to claim it and
deny the rightful owner of the domain name;
· the Complainant would like the Panel to believe that his use of
the logo LAND.BIZ had nothing to do with the issue of the relevant “.BIZ”
domain names and that it is an unrelated event that led the Complainant later
applying for an IP claim and the <land.biz>
domain name;
· the Complainant uses logos for some of the most sought after
domain names and expects to be awarded these names and ignores the fact that
his actions represent misuse of trademark laws. The Complainant also adds and
removes these logos at leisure as in the case of the incorrectly spelt logo for
MORTGAGE.BIZ that has been spelt MORGAGE.BIZ. The Complainant uses REALESTATE.BIZ,
SCUBA.BIZ and 4SALE.BIZ as logos to claim rights to the same “.Biz” domain
names;
· the Complainant provides no proof of its business plans, Gard
Engineering is an entity of unknown form and despite commencing the STOP
Complaint the Complainant seems to have nothing on his site other than a mix of
information on a single property “Alta Plains Properties” which is copyright
November 2001 and from <archive.org> has been the only property ever
listed since first including content in February 2001. So the purpose of
<1stardrive.com> is to obtain other domain names by means of reverse
domain name hijacking. Complainant
provides links to another site, which uses logos for ALASKA.BIZ, PROPERTY.BIZ
and MORTGAGE.BIZ also without owning any of these domain names;
· the Complainant has wasted his time, effort and funds in trying
to hijack the domain name by registering the trademark LAND.BIZ as he only
becomes entitled to a challenge for the domain name LANDBIZ.BIZ which is still
available for registration and which reflects his alleged mark (excluding
“.Biz”suffix);
· once there is another new gTLD being offered by an ICANN
approved registry the Complainant is
likely to use a logo on its site with that gTLD in order to obtain particular
domain names. Land is generic and the Complainant does not have exclusive use
of the word. “.Biz” simply refers to
the suffix for the registry for domain names used for business. Any IP notice was simply notice that a party
claims to have non-exclusive rights to the common English word “land”;
· the Complainant is by no means famous and Respondent had not
heard of him prior to applying for the domain name. As the word “land” is generic and as the Complainant does not
have exclusive use of the word “land” the Respondent is just as entitled to use
the domain name reflecting the word “land”.
Complainant's domain name is
<1STARDRIVE.COM> which is not similar to <land.biz>. As the rightful owner of <land.biz> it is the Respondent that should be concerned at the Complainant’s
misuse of trademark law in an attempt to obtain the domain name;
· the Complainant confirms commencing the STOP Complaints for
three domain names reflecting the logos displayed on its site. The Complainant is into stage two of his
plan to obtain the domain names having failed to fairly register them;
· the Complainant acknowledges that “land” and “.biz” are in the
public domain. If Complainant believes
that he has a trademark for LAND.BIZ then he should seek to register
LANDBIZ.BIZ as the “.biz” at the end of the domain name is not part of the term
reflected by the domain name but is the registry extension. The domain name LANDBIZ.BIZ is available and
has not been registered highlighting that the Complainant's real aims are
nothing to do with protecting his mark but solely to obtain particular domain
names;
· Neulevel IP claims were no guarantee of registration and only
provided notice that a party claimed rights to a common English word;
· from <archive.org> Complainant has had the same “land”
related details on his site for over a year. This reflects the fact that the
details available on the site are not business related but are there in order
to fulfill the goal of reverse domain name hijacking the domain name <land.biz>;
· the Complainant has not registered <LAND.COM>,
<LAND.NET>, <LAND.ORG> or <LAND.INFO> or successfully
challenged registrants in order to protect his alleged rights to the word
“land”. The Complainant has not bothered to register <LANDBIZ.NET>,
<LANDBIZ.ORG>, <LANDBIZ.INFO> or <LANDBIZ.BIZ> in order to
protect his alleged mark all of which are still available. Respondent adds
Complainant has not successfully challenged the registrant of
<LANDBIZ.BIZ> for the domain name, the whole as more fully appears from
Exhibit 17;
· Hola S.A v. Idealab
should be referred to, it concerns the domain name <HELLO.COM>, which was
also for a generic domain name resulting in the Complainant having its
Complaint denied;
· it has plans to use the domain name along with an associated
domain name in a Geographical Information Systems [GIS] related project. This project is the subject of a PhD thesis
at Kings College, London University, as more fully appears in Exhibit 4;
· this is proof of substantial preparation for use of the domain
name in a field reflected by the word land.
An abstract of the PhD, which comprises hundreds of pages, is included
as Exhibit 5;
· the disruption
to the Complaint's trade is most probably nil as his web site has a ranking of
over 3 million and as a result does not receive many visitors anyway, as more
fully appears in Exhibit 6;
· the Complainant's site can be reproduced within a couple of
hours. The Complainant refers to the use of custom CGI Perl which is not a
major achievement;
· both the Complainant and the Respondent intend to use the domain
name for land related projects and as a result neither would be granted a
registered trademark for “land”. the Respondent does not need a trademark to
register a domain name reflecting a generic term;
· “Land” is a common English word and the Respondent is entitled
to use it as a domain name reflected in the “.biz” gTLD;
· the Complainant has accepted the terms of STOP and yet holds
the registry responsible for not being awarded the domain name;
· the Complainant and the Respondent are not competitors and
there is no likelihood of confusion between them as Complainant operates in his
local area in the US;
· iSMER is a partnership and intends to develop the site for
“land” related business using GIS. The
research for the site is the subject of a PhD thesis at Kings College, London
University. An abstract is included as
(exhibit 5) and much of the work can be found at <waleed.org> or at the
geography Department postgraduate site of Kings College, London University. The supervisor for the research is Dr Mark
Mulligan;
· some projects, which iSMER partners have completed, are listed
as exhibit (exhibit 12) and many are complex projects requiring a high degree
of skill.
C.
Additional
Submissions
The Complainant contends, inter alia, that :
· Respondent relies heavily on the printout to infer Complainant
did not have a site up and running with content prior to February 2001;
· he cannot explain why this data shows no content for the year
2000, but he suggests it is just another computer program that does not work
like it is suppose to;
· he does update his files regularly and most of pages are new. He
adds that there are files that are still present from the original creation of
Complainant's site. A dump of three directories, having files dates stamped in
the year 2000 on Complainant's site <1stardrive.com>, are attached to
this document. Root directory has cnt as start date for CGI control file and
show .shtml as of September 2000;
· Wild
Horse Acres is land that he is marketing since 1996 on sites that has not sold;
· the comments by the Respondent about the Complainant’s use of
copyrighting LAND.BIZ by stating that it can not be correct because content for
the site didn't start before February 2001 is bogus information and that it
makes statements that are untrue as the information the Respondent relies on;
· Complainant
contends that he has already gone through the use of the logo LAND.COM,
LAND.FINO, LAND.ORG, LAND.NET with the Office of Patent and Trademarks of
United States, but it is rumored that <land.biz>
has been registered, as shown by Exhibit 2, the Trademark Applications and
Registrations Retrieval TARR 78053890;
· the argument that LAND.BIZ cannot be trademarked is bogus.
HOMES.COM is registered and it uses a generic term;
· he is under no obligation to register the names
<LANDBIZ.BIZ>, <LANDBIZ.NET>, <LANDBIZ.INFO>, etc. to valid
his trademark/name because this is not what he claims as a trademark/name;
· he is not attacking the Registry Operator
per se but rather stating the procession of bad faith because he alleges he did
confer title he can't.
Respondent's
additional Response
The
Respondent contends, inter alia, that
:
· Complainant has not proven he had accessible content on his web
site, but merely displays when files were first created on a machine using a
Unix or Linux operating system;
· the truth is simply that Complainant was not aware of the
software located at <archive.org>;
· it does not attempt to discredit Complainant but simply
provides tangible evidence that is clear and visible for all to see and the
Respondent’s use of <archive.org> is based on what many lawyers use;
· the Complainant, by saying he has “files for United States
trademark/name protection to protect himself from future theft”, basically
admits creating the trademark with the domain name in mind therefore misusing
the STOP Policy to deny the rightful registrant its generic domain name;
· the Complainant registered his trademark for LAND.BIZ on 18
June, 2002, this is well after the IP claims date giving him rights in the
domain name <LANDBIZ.BIZ> as the “.biz” suffix is ignored to prevent
reverse domain name hijacking;
· the Complainant’s unverified IP claim was completed based on an
application for a trademark which itself was only made in order to obtain the
domain name;
· LAND.BIZ can be registered as a trademark but “land,” when used
for matters related to land cannot be registered as a trademark;
· he has not attempted to sell the domain name to Complainant,
and it is by no means famous. Complainant operates in a local market in which
Respondent is not intending to do business in;
Having reviewed the evidence submitted by
the parties and their written representations, the Panel makes the following
findings :
·
Even if the
Complainant has rights in the trademark LAND.BIZ, he has not satisfied the
Panel that the Domain Name is identical to the said trademark.
·
The
Respondent has rights or legitimate interests in the Domain Name.
·
The
Complainant has not discharged his burden of showing that the Respondent acted
in bad faith in using or registering the Domain Name.
Introduction
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 should
necessarily involve 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
Panel finds that the Complainant has rights in the trademark LAND.BIZ for the
registration of which, the Complainant has filed an application in the USA, on
March 19, 2001, based on a date of first use and a date of first use in
Commerce of March 18, 2001. This application matured to registration on June
18, 2002. The Complainant has also filed some evidence of use of this
trademark.
It
is to be noted that the trademark is registered on the Supplemental Register.
It can be interpreted from this fact that this trademark did not have
sufficient distinctiveness to be registered on the Principal Register. It is
also very important to note that the trademark which the Complainant was
successful in registering is “LAND.BIZ” and not the word “LAND” alone. Because
of an even greater lack of distinctiveness, the Panel doubts that the word
alone would have been registered on the Supplemental Register with the same
goods as those in association with which “LAND.BIZ” was registered, i.e. “Land acquisition, namely, real
estate brokerage of unimproved land acreage, timber land and unexplored empty
lands with potential resources”.
The Domain Name must be identical to the
trademark or service mark
In
STOP proceedings, the generic top-level domain (“gTLD”) “.biz” is irrelevant
when determining whether a domain name and mark are identical, just as gTLDs
such as “.com” and “.net” are disregarded in UDRP cases. See
Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA
102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a
disputed domain name is not a factor, and hence to be ignored, when determining
whether the domain name is identical to a mark in which the Complainant has
asserted rights).
When
these principles are applied to the present case what needs to be compared is
the Domain Name without the “.BIZ”, i.e.
the word “LAND”, and the trademark in which the Complainant has rights, i.e.
the expression “LAND.BIZ”. It is then easy to conclude that the two are not
identical. There is no doubt that the two are confusingly similar but such a
finding is irrelevant in a STOP proceeding.
Therefore,
the Panel finds that the Domain Name is not identical to a trademark or service
mark in which the Complainant has rights.
Having
made the finding that it made concerning the first three elements, the Panel
could refrain from dealing with the two remaining elements. However, the Panel
for more certainly wishes to deal with those two other elements briefly.
As
admitted by the Complainant, the word “LAND” is in the public domain. More than
one person can have legitimate interests in using it as part of a domain name.
The fundamental problem here stems from the registration of a generic name,
“LAND”, as part of a trademark. There are hundreds of businesses and entities
which use the word “LAND” as part of their trade names or trademarks. There are
other domain names containing the word “LAND” which have been registered as :
<LAND.COM>, <LAND.NET>, <LAND.ORG>, <LAND.INFO> and
<LANDBIZ.COM>. These domain names are owned by persons other than the
Complainant (Exhibit 17 of the Respondent's Response).
If <land.biz>
has to be transferred to the Complainant, then it follows that the other above
domain names containing the word “LAND” should also be transferred to the
Complainant. However, although these other domain names have been registered
for some time, the Complainant has apparently taken no steps to challenge those
registrations and Complainant has apparently suffered no prejudice by their
existence.
In Black
v. Molson Canada (Docket : O2-CV-231-828CM3) Justice B. Wright of the
Ontario Superior Court, whom the Panel has paraphrased to some extent in the
above reasoning, wrote in his judgement dated July 18, 2002 :
Simply
because a domain name is identical or similar to a trademark name should not
result in the transfer of the domain name to the trademark owner. In my view,
unless there is some evidence that the use of the domain name infringes on the
use of the trademark name, a person other than the owner of the trademark
should be able to continue to use the domain name.
The Respondent is a partnership and
intends to develop a site for land related business using Geographical Information
Systems (GIS). The research for the site is the object of a PhD thesis at Kings
College, London University (Exhibit 5 of the Respondent's Response).
Mr. Waleed Al-Sabhan has confirmed in
writing that <land.biz> is to
host a site using GIS applications and remote sensing to deliver services
connected with land and land data. His PhD thesis at Kings College is the research for this project (Exhibit 4
of the Respondent's Response).
The evidence brought foreword by the
Respondent has convinced the Panel that the Respondent has legitimate interests
in respect of the domain name. Others may also have a legitimate interest but
this is irrelevant.
The
Panel sees no bad faith in the fact that the Respondent has registered or
intends to use the Domain Name. As stated before, the Complainant cannot claim
to have the exclusive right to use the word “LAND” as part of a domain name.
The
Respondent and the Complainant are not in competition. By applying to register
as a trademark the expression “LAND.BIZ” before having secured the registration
of the domain name LAND.BIZ, the Complainant took a big risk, he cannot blame
the Respondent for what happened. The Panel finds that the Complainant has not
proven that the Domain Name has been registered or is being used in bad faith.
DECISION
For the foregoing reasons, the Panel
concludes :
·
that the
Domain Name is not identical to a trademark or service mark in which the
Complainant has rights;
·
that the
Respondent has rights or legitimate interests in respect of the Domain Name;
and
·
that the
Domain Name has not been registered nor is being used by Respondent in bad
faith.
The Complainant having failed to meet its
burden on the three elements which need to be proven cumulatively under the
STOP Rules, accordingly, the Panel dismisses the Complaint.
Hugues G. Richard, Panelist
Dated: August 7, 2002
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