Gard Engineering v. Ismer
Claim Number: FA0206000114526
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.
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.
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.
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.
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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