New Cargo Furniture, Inc. v. BDG Marketing
Claim Number: FA0206000114606
Complainant is New Cargo Furniture, Inc., Fort Worth, TX, USA (“Complainant”) represented by Pamela S Ratliff, of Baker Botts LLP. Respondent is BDG Marketing, Ubud, Bali, INDONESIA (“Respondent”).
The domain name at issue is <cargo.biz>, registered with Easy Space LTD.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., 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 14, 2002; the Forum received a hard copy of the Complaint on June 13, 2002.
On June 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 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 5, 2002.
Complainant submitted an Additional submission on July 10, 2002. This submission was received in a timely manner and has been considered by the Panel.
On July 22, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M. Wallace, Q.C., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant owns a number of United States and Mexico trademark registrations for CARGO for furniture and retail furniture stores. Complainant is a manufacturer and retailer of high-quality furniture. Complainant has advertised and promoted its goods and services throughout the United States under its CARGO family of trademarks for at least twenty years.
Complainant asserts that the domain name <cargo.biz> is identical to its CARGO trademark, and that Complainant’s use of the CARGO trademarks long predates any use or registration of the domain name by Respondent.
Complainant further asserts Respondent should be considered to have no rights or legitimate interests in the domain name because Respondent is not a licensee of Complainant and has not received any permission or consent to use the CARGO trademark. Complainant asserts that Respondent is not named CARGO, owns no trademarks or service marks incorporating CARGO and has never done business under the name CARGO. Complainant asserts that Respondent is not offering goods or services under this name and is not commonly known as CARGO.
In light of my findings below, I need not deal with Complainant’s arguments in relation to bad faith.
Respondent is the marketing division of Bali Direct Group of Companies. The group is made up of several different businesses that provide different services and/or trade in different products including arts and handcrafts, jewelry, fashions and accessories, furniture and home accessories. The main services provided by Respondent are freight forwarding, buying and product sourcing, marketing and Internet related services. More new companies have recently been formed within the group, and Respondent has registered several domain names that will be used, in the form of web sites, to promote the goods and services of the companies.
In early 2001, Respondent formed the business, Cargo.biz. The intended and only place of business of Cargo.biz will be online on the Internet. The company will provide and facilitate the provision of commercial transportation services and products. Respondent submitted evidence of the Cargo.biz logo that has been developed, as well as a mock-up of the intended Cargo.biz homepage. Respondent has not developed the site further because of this STOP proceeding.
Respondent asserts that it has the right, just like any other entity, to use a generic word such as CARGO in its business. Complainant may have trademark rights in respect of furniture and retail furniture sales, but does not have all rights over the word CARGO. Respondent submitted evidence, for example, that there are some 298 “live” registered or pending trademark applications in the United States Patent and Trademark Office in which registrations the word CARGO appears.
Respondent disputes that its domain name is identical to or confusingly similar to Complainant’s mark because Respondent’s name is not merely CARGO, but CARGO.BIZ, in Respondent’s case, the .BIZ portion of the company name being an integral part of the name and signifying that the business is an Internet business.
Respondent asserts that it has a legitimate interest in the domain name. Respondent applied to register <cargo.biz> on September 8, 2001, to use in connection with its newly formed business Cargo.biz. The business will operate a web site to facilitate the provision of commercial transportation services and products, services and products that are in no way similar to Complainant’s service or products. Respondent submits that the creation of the name Cargo.biz, the application for the domain name registration, the development of the trademark for Cargo.biz, and the development of the home page lay-out for the business all illustrate demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. These preparations pre-date notice of Complainant’s claim to the domain name which Respondent learned of only when it received notice of Complainant’s IP Notice under the STOP Policy. Respondent has gone no further with the development of the business because of this proceeding.
In light of my findings below, I need not deal with Respondent’s submissions with respect to the allegations of bad faith.
C. Additional Submissions
Complainant’s Additional Submission does not add appreciably to the arguments. Complainant points out that Respondent has acknowledged that the domain name is identical to Complainant’s CARGO trademark.
Complainant further asserts that all Respondent has done is add the .biz extension to Complainant’s CARGO trademark. This does not demonstrate a right or legitimate interest nor create a new distinguishable mark. Complainant asserts that the word CARGO is not generic, as evidenced by its trademark registrations for CARGO.
Complainant asserts that Respondent has failed to demonstrate that its use of <cargo.biz> will not create a likelihood of consumer confusion. Respondent states that Cargo.biz is a recently formed company and its intended and only place of business will be online on the Internet and the plan is to fully develop and launch a web site that will be used to provide and facilitate the provision of commercial transportation services and products. Based on the goods and services provided by the BDG group of companies, it is likely that furniture provided by the companies will be transported using the Cargo.biz services. Additionally, Complainant submits that Respondent’s business plan may change in the future to include the sale of furniture under the Cargo.biz mark.
With the exception of the .biz extension, the disputed domain name <cargo.biz> is identical to Complainant’s CARGO trademark. Respondent, however, has rights and legitimate interests in 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 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 evidence, through proof of registered CARGO trademarks, establishes Complainant’s rights in the CARGO mark.
The domain name is <cargo.biz>. The trademark is CARGO. Within the meaning of the STOP Policy, the domain name is identical to a trademark in which Complainant has rights.
Respondent’s evidence establishes rights or legitimate interests in the domain name within the meaning of the STOP Policy.
Upon learning of the creation of the .biz extension, Respondent made preparations to register and use <cargo.biz> in connection with an Internet based business it created called Cargo.biz. Before any notice of a dispute with Complainant, Respondent filed the registration application for Cargo.biz, developed the company logo and began work on the web site content. The <cargo.biz> domain name is intended to be used in connection with the bona fide business of transportation services and products. Respondent was candid in admitting that the Bali Direct Group of Companies does engage in the furniture business, but there is no suggestion whatsoever in the evidence that <cargo.biz> will be used for any business other than transportation services. Were that to change in the future, then Complainant may have a legitimate complaint against Respondent for trademark infringement. At this time, however, there is no evidence of infringement.
Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, and began those preparations before notice of the dispute. Respondent, therefore, has rights to and legitimate interests in the domain name within the meaning of STOP Policy 4(c)(ii).
In light of my findings with respect to rights and legitimate interests, I need not deal with the question of bad faith.
The Complaint is hereby dismissed, and the Panel hereby determines that subsequent challenges to this domain name, as against the Respondent under the STOP Policy shall not be permitted against this domain name,.
Anne M. Wallace, Q.C., Panelist
Dated: July 31, 2002
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