Gerardus Ferdinand Forsthovel v. Nielsen
a/k/a Jens Zacharias Nielsen
Claim Number: FA0206000114619
PARTIES
Complainant
is Gerardus Ferdinand Forsthovel,
Amsterdam, NETHERLANDS (“Complainant”).
Respondent is Nielsen a/k/a Jens Zacharias Nielsen, Koebenhaven V,
DENMARK (“Respondent”).
The
domain name at issue is <login.biz>,
registered with Network Solutions, 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.
Houston
Putnam Lowry, Chartered Arbitrator, 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 18, 2002; the Forum
received a hard copy of the Complaint on June 17, 2002.
On
July 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
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 August 1, 2002.
On August 9, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Houston Putnam Lowry
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
domain name reflects the registered trademark of Complainant. The letters LOGIN are an exact match of the
registered Benelux trademark in which Complainant has rights.
Respondent
has filed no Intellectual Property claims for the LOGIN mark. Respondent has no registered trademark for
Login. Respondent's free email address
at ING.AS indicates no real legitimate corporate concern. Complainant has been using the Login
trademark for online business since 1998.
Complainant
has no indication Respondent registered or used the <login.biz>
domain in bad faith.
B.
Respondent
The word
“login” must be considered a generic term, or else, must be considered too
close to a generic term, to be significant for a single company or product
(e.g. the name Coca-Cola, is significant for a company and it’s products, and
is not a generic term).
A single
company or person cannot have special rights for a generic term, as a company
name or product name.
Respondent
began starting 2-3 years ago a company for selling information for alternative
medicine and environmental and ecological products. As a name for this activity Respondent uses the name “login” (it
symbolizes to login to better medicine and environment). Respondent wants to make a web site for
advertising for these products.
Respondent is still preparing the company and its activities.
Respondent
registered the domain name in good faith.
The domain name was not registered primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the
Complainant, or to a competitor of the Complainant, for valuable consideration
in excess of the Respondent’s out-of- pocket directly related to the domain
name.
Respondent
has not registered the domain name in order to prevent the Complainant from
reflecting the mark in a corresponding domain name.
The
parties are not competitors and the domain name was not registered by
Respondent primarily to disrupt the Complainant’s business.
The
domain name was not registered by Respondent in an international attempt to
attract for commercial gain internet users to Respondent’s web site by creating
a likelihood of confusion with the Complainant’s trademark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or product or
service on Respondent’s web site.
The Panel finds:
(1) The domain name <login.biz>
is identical to Complainant’s registered mark.
(2) Respondent has
no rights or legitimate interests in respect of the domain name.
(3) the domain name has NOT
been registered or is being used in bad faith
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 “login” mark is identical
to the <login.biz> domain name.
Complainant registered the “login” mark on the Benelux trademark
registry on February 13,1998. The Panel
will not, as seemingly suggested by the Respondent, review the propriety of the
registration on the grounds it is a common word. Complainant has used the mark in connection with an on-line
business since 1998.
Respondent has demonstrated no rights to
the “login” mark. Respondent has not
claimed to be the owner or beneficiary of the “login” mark (in any
jurisdiction).
Respondent claims he “begin starting” a
company two or three years ago for selling information about alternative
medicine and environmental and ecological products. This company has not actually started business nor was any
evidence provided that supported the assertion it has been preparing to
commence business for such a long period of time. The requirement under STOP Policy ¶4(c)(ii) is for demonstrable
preparations to use the domain name in connection with a bona
fide offering of goods or services. The goods and services are not yet being
offered and there was no evidence to support the assertion that preparations
were underway. “Beginning to prepare”
is not sufficient under the STOP Policy and Respondent acquires no common law
rights.
Respondent is not commonly known by the
“login” moniker. Respondent apparently
does not does not engage in the sale of any goods, services or information,
much less under the “login” mark.
There are a number of ways bad faith
registration and/or use can be found.
Only one needs to be found for the Complainant to prevail. According to the STOP Policy, the following
is a non-exclusive list of ways to find bad faith:
i.
Circumstances indicating that Respondent has registered the domain
name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to the Complainant or to a competitor of the
Complainant, for valuable consideration in excess of Respondent’s documented
out-of-pocket costs directly related to the domain name; or
ii.
Respondent has registered the domain name in order to prevent the
Complainant from reflecting the mark in a corresponding domain name; or
iii.
Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor; or
iv.
By using
the domain name, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s web site or other on-line
location, by creating a likelihood of confusion with the Complainant's mark as
to the source, sponsorship, affiliation, or endorsement of Respondent’s web
site or location or of a product or service on Respondent’s web site or
location.
None of these factors are present
here. In fact, Respondent has
specifically denied each and every one of these factors. Complainant was candid in saying he has “no
indications” of bad faith. Complainant
apparently did not even attempt to register the <login.biz> domain
name (or neglected to inform the Panel of the fact).
There is a fundamental difference in a STOP proceeding,
which was highlighted in Gene Logic Inc v. Bock, FA 103042 (Nat. Arb.
Forum) http://www.arb-forum.com/domains/decisions/103042.htm. Quoting
that case, “As the Panel understands the STOP procedures, the ‘Notice of a .biz
Intellectual Property Claim’ that the potential registrant receives in every
.biz case, where there is a pre-filed IP Claim, is this unmistakable warning of
the existence of a conflict over intellectual property rights:
‘According
to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally
notify you that the domain name for which you applied matches one or more
Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual
property owners believe that they have intellectual property rights in the
domain name for which you have applied.
You should be aware that if you choose to continue the application
process, your domain name registration may be challenged under several Internet
Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution
mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html
and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm.’”
However, this warning does not change the
fact Complainant must prove this element to prevail. The STOP notice cannot turn the bad faith requirement on its head
by forcing Respondent to prove a negative.
Having provided literally no evidence, Complainant cannot prevail on
this point.
DECISION
For the foregoing reasons, the domain
name shall NOT be transferred. There are no further challenges pending against this domain name
under the STOP Policy.
Houston Putnam Lowry, Panelist
Dated: August 13, 2002
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