START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

International Truck Intellectual Property Company LLC v. Lin Zan Song

Claim Number: FA0207000114759

 

PARTIES

Complainant is International Truck Intellectual Property Company LLC, Warrenville, IL, USA (“Complainant”) represented by Mark V.B. Partridge, of Pattishall McAuliffe Newbury Hilliard & Geraldson.  Respondent is Lin Zan Song, Wenzhou Zhejiang, CHINA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <international.biz>, registered with Xin Net Corp.

 

PANEL

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

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 July 1, 2002; the Forum received a hard copy of the Complaint on July 3, 2002.

 

On July 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 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 5, 2002.

 

Complainant’s additional submission was timely received on August 9, 2002.

 

On August 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.            Complainant International is a long-established global company engaged in the manufacturer, sale, and service of trucks, buses, engines and parts.  International was formerly known as International Harvester Company and under that name was engaged in the manufacturer and sale of agricultural and construction equipment.

 

            2.            Since 1914, International adopted, and has continuously used and promoted since that adoption, the mark INTERNATIONAL in connection with its products and services throughout the world.

 

            3.            International owns valid and subsisting federal trademark registrations for the INTERNATIONAL mark.  In accordance with 15 U.S.C. §§1065 and 1115(b), these registrations constitute conclusive evidence of the validity of the mark and International’s ownership of the mark. In addition, “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”  Autosales Inc. v. Terrill, D2001-1341 (WIPO Feb. 24, 2002).

 

            4.            International has used the mark on a worldwide basis, and has registered the INTERNATIONAL mark or applied for registration in numerous foreign jurisdictions, including China where Respondent is located.  The mark was registered in China on May 14, 1996. International’s website, located at <www.internationaldelivers.com>, allows for a user to search for a dealer in 69 countries, with two dealers located in China.

 

            5.            International has invested many millions of dollars in advertising and promoting the INTERNATIONAL mark and has sold or licensed many millions of dollars in goods and services under that mark.  As a result of International’s extensive marketing efforts, substantial sales and the resulting success of its goods and services the mark has become famous and represents valuable goodwill owned by International.

 

            6.            Long after Complainant’s adoption and extensive use of INTERNATIONAL, Respondent registered the <international.biz> domain name.

 

            7.            During the registration process, Respondent received notice of Complainant’s IP Claim in INTERNATIONAL.  Nevertheless, Respondent proceeded with the application without contacting Complainant to resolve the issue.  It has been held that such conduct demonstrates bad faith.

 

            8.            Respondent’s <international.biz> domain name is identical to International’s mark.

 

            9.            Respondent does not have any rights or legitimate interest in the disputed domain name.  Respondent does not conduct any legitimate commercial or non-commercial business activity using the <international.biz> domain name.  Respondent is not commonly known by the <international.biz> domain name and has not acquired any trademark or service mark rights to such name.  Respondent has made no bona fide use of the <international.biz> domain name.

 

B. Respondent

            1.            The name “INTERNATIONAL” is generic and may be used by anyone without restrictions on the Internet.  There are 45,900,000 web pages found after a search on Yahoo, which involve the word “INTERNATIONAL.”  There are more than 2,000 domain names found after a search on <nameprotect.com> which involve the word “INTERNATIONAL.”  The domain names <international.com>, <international.net>, and <international.org> are also registered on behalf of companies different from the Complainant.  As such a generic term, neither the Complainant, nor the Respondent, have demonstrated protectable rights in the mark.  The domain name <international.biz> is identical to a trademark in which Complainant has non-exclusive rights.

 

            2.            Respondent obtained the domain name <international.biz> by the fairest method among the lot of people who wanted it or needed it.  This is because the word “INTERNATIONAL” is open to the general public on the Internet.  This led Respondent to conclude that he has legitimate interests in respect to the domain name <international.biz>.

 

            3.            Respondent plans to use the registered domain name in connection with his ownership of other domain names that relate to Chinese cities and districts.

 

            4.            Before any notice of this Complaint, Respondent knew nothing about the Complainant or about the trademark owned by Complainant.  Complainant is an unknown in China.  It has only two dealers in China.

 

            5.            Although notified of Complainant’s IP Claim, Respondent proceeded with his application to register the disputed domain name because he had a legitimate interest in securing that domain name for his planned business development.

 

            6.            Respondent never registered <international.biz> with the purpose of selling, renting, or otherwise transferring it to Complainant or its competitors.  There is no proof indicating that Respondent has offered his domain name <international.biz> for the purpose of selling, renting, or otherwise transferring it to others including Complainant.

 

            7.            Respondent has not been able to use the domain name <international.biz> as planned due to the fat that the domain name is locked by NeuLevel until completion of the controversy.  He has made demonstrable preparations to use the domain name.  Respondent asserts that he never registered or used the domain name <international.biz> in bad faith and shall never use it in bad faith in the future.

 

C. Additional Submissions

            Complainant made a timely additional submission in rebuttal to Respondent’s response.

 

            1.            Complainant has established that the disputed domain name is identical to its strong INTERNATIONAL mark.  Respondent failed to rebut this conclusion.  Respondent did, however, imply that the INTERNATIONAL mark is merely descriptive.  This argument, in addition to being unfounded, is precluded as a matter of law.  Complainant owns an incontestable registration in the INTERNATIONAL mark.  Incontestability forecloses a challenge to the mark’s validity on the grounds of being merely descriptive.  See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 196-97 (1985).  Respondent has failed to establish that Complainant does not have rights in a trademark identical to the disputed domain name.

 

            2.            Complainant has established that it has strong and worldwide rights in the INTERNATIONAL mark.  In light of Complainant’s evidence, the burden shifts to Respondent to prove a legitimate interest in the disputed domain name.  See Seagate Technology LLC v. TC Services, FA 102782 (Nat. Arb. Forum Feb. 7, 2002).  Thus, Respondent must “explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.”  Gene Logic Inc. v. Cho Kyu Bock, FA 103048 (Nat. Arb. Forum Mar. 4, 2002) (emphasis added).  Respondent’s unsupported allegations do not meet this burden.  Respondent failed to prove that it has ever used, or made demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name.  While Respondent makes unsupported references to an “e-business website module” and a “planned business development” of which “international.biz will be . . . important,” these statements, without more, are insufficient.

 

            3.            In addition, Respondent failed to allege it owns a trademark or service mark identical to the disputed domain name.  Respondent also failed to allege that it is commonly known by the disputed domain name.  Thus, Respondent has failed to allege any facts necessary to establish a legitimate interest or rights in the disputed domain name.

 

            4.            Respondent alleges that he was unaware of Complainant’s rights prior to this action, and thus he did not act in bad faith.  This is false.  Respondent was notified of the IP Claim.  Notice of the IP Claim may “preclude any possibility of registration in good faith.”  Gene Logic Inc. v. Cho Kyu Bock, FA 10342 (Nat. Arb. Forum Mar. 4, 2002).  In addition to this notice, Complainant e-mailed Respondent prior to filing this action.  Complainant also registered the INTERNATIONAL mark in China on May 14, 1996.  Finally, Respondent had constructive notice, as Complainant’s mark is registered in the United States.  See 15 U.S.C. §1072.  Respondent’s registration in spite of actual and constructive notice of Complainant’s rights is evidence of bad faith.

 

FINDINGS AND CONCLUSIONS

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.

 

STOP Policy ¶4(a)(i)

 

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.

 

Unlike domain name disputes brought under the UDRP, STOP claims require that the disputed domain name be identical to a trademark or service mark in which the Complainant holds rights.  A domain name that is merely confusingly similar to a mark cannot be transferred through a STOP claim (although the holder of a non-identical but similar mark could bring a UDRP complaint when the domain name eventually clears any other pending STOP complaints).  See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).

 

Here, the evidence establishes conclusively that the Complainant has three registrations in the United States Patent and Trademark Office for the mark INTERNATIONAL® which are identical to the domain name <international.biz>, and the Panel so finds and concludes.[1]

 

STOP Policy ¶4(a)(ii)

 

STOP Policy ¶4(c) functions similarly to UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or legitimate interests in a domain name.

 

Under STOP policy ¶4(c), the Respondent may demonstrate its rights or interests by proving:

 

i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

or

ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

or

iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.

 

Respondent has submitted no evidence whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panel finds and concludes that Respondent has not so demonstrated.

 

With respect to ¶4(c)(ii), Respondent contends that he has made demonstrable preparations to use the subject domain name in connection with other websites and domains that he owns, which relate to Chinese cities and districts.

 

In the Panel’s opinion, Respondent’s assertion simply is not adequate.

 

Accordingly, the Panel finds and concludes that Respondent does not fall within ¶4(c)(ii).  There have been no demonstrable preparations to use the subject domain name for a bona fide offering of goods.

 

Respondent does not have a legitimate interest or rights to the subject domain name.[2]

 

STOP Policy ¶4(a)(iii

 

STOP Policy ¶4(b) provides four non-exclusive examples of circumstances that, if proven, will satisfy the bad faith requirement of STOP Policy ¶4(a)(iii).

 

To establish bad faith under the STOP Policy, the Complainant need only prove either registration or use of the domain name in bad faith, not both as the UDRP requires.

 

STOP claims differ from UDRP claims in one very significant and fundamental way.  Unlike the UDRP, under STOP when a registration (Respondent) registers a domain name for which an IP Claim was previously filed, the registrant is notified of the potential for trademark infringement before being allowed to proceed with the registration.  One Panel has recognized that registration of a domain name despite such notice in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name. . . .”  Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding bad faith where Respondent registered the <genelogic.biz> domain name “with full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

 

Under UDRP ¶4(b)(ii), a Complainant may demonstrate Respondent’s bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark(s), provided Respondent has engaged in a pattern of such conduct.  Under STOP Policy ¶4(b)(ii), the Complainant may similarly prove bad faith by showing the Respondent registered the domain name for the purpose of preventing Complainant from registering domain names reflecting its mark(s).  However, under the STOP provision, there is no “pattern” of conduct requirement.  Thus, Panels have found bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at issue and no prior history of trademark infringement was established.  See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent’s knowledge of Complainant’s mark and Respondent’s lack of rights or interest in the mark).

 

Here, there is a legal presumption of bad faith, because of Complainant’s long existent registration of its mark with the United States Patent and Trademark Office.  Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively.

 

There is no valid proof to the contrary.

 

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th 1999) 184 F.3d 1107, 1111, it was said:

 

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 550 F.2d at 354.

 

Thus, the disputed domain name was registered in bad faith.

 

DECISION

Based on the above findings and conclusions, it is decided that the domain name <international.biz> registered by Respondent Lin Zan Song, shall be and the same is transferred to the Complainant International Truck Intellectual Property Company, LLC.  Subsequent challenges under the STOP Policy against this domain name shall not be permitted.

 

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: September 4, 2002

 

 

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[1] Complainant has five additional registrations that use the name “INTERNATIONAL” coupled with a distinctive design.  In the Panelist’s opinion, because of the design, which is part of the trademark, these registrations are not “identical” to the disputed domain name.

[2] It is of interest to note that Respondent’s assertion that the disputed domain name is “generic” backfires.  This is because, as admitted by Respondent, if the name were “generic,” he could not demonstrate “. . . protectable rights in such a mark.”  In any event, if there is a federal registration, as here, it constitutes a strong presumption that the term is not generic.  (See 2 McCarthy Trademarks and Unfair Competition (4th ed. Updated 6/2002) §12:12, p. 12-29.)