Passport Corporation v. Honda Giken Kogyo
Kabushiki Kaisha
Claim Number: FA0207000115079
PARTIES
Complainant
is Passport Corporation, Paramus,
NJ, USA (“Complainant”) represented by Christopher
F Zosa. Respondent is Honda Giken Kogyo Kabushiki Kaisha,
Tokyo, JAPAN (“Respondent”).
The
domain name at issue is <passport.biz>,
registered with Corporate Domains, 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.
Rodney
C. Kyle 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 July 11, 2002; the Forum
received a hard copy of the Complaint on July 16, 2002.
On
July 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 7,
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 7, 2002.
Complainant’s
timely Additional Submission was received on August 12, 2002.
Respondent’s
timely Additional Submission was received on August 14, 2002.
On August 20, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Rodney C. Kyle
as the single Panelist.
Complainant,
citing STOP ¶ 10, seeks transfer of the domain name at issue from Respondent to
Complainant.
Respondent
(i)
citing STOP ¶ 15(e)(ii), seeks denial of the remedy requested by Complainant,
dismissal of the Complaint, and a decision that no subsequent challenges under
the STOP shall be permitted against the domain name at issue; and
(ii)
citing STOP Rule 15(d), seeks a finding of reverse domain-name hijacking.
A. Complainant
In
the Complaint, Complainant basically contends
(i)
as to STOP ¶ 4(a)(i), that the manner in which the domain name at issue is
identical to a trademark or service mark in which the Complainant has rights is
that
1. Complainant holds the trademark
registration for PASSPORT, filed 09/21/1987, United States Patent and Trademark
Office Registration No. 1,541,266 on 05/30/1989, United States Department of
Commerce, Patent and Trademark Office assignment of the entire interest and the
goodwill recorded 08/01/1994,
2. Complainant has been using the trademark
in connection with a bona fide offering of goods and services since 1987, and
3. the domain name at issue is identical and
confusingly similar to Complainant's
registered
trademark;
(ii)
as to STOP ¶ 4(a)(ii), that why the Respondent should be considered as having
no rights or legitimate interests in respect of the domain name at issue is
that
1.
Complainant's
business name and products are known by the domain name at issue,
2.
Complainant's
use and trademark of the domain name at issue predates the registration by
Respondent of the domain name at issue,
3.
Respondent
is not a licensee of Complainant,
4.
Respondent
does not appear to be using the domain name at issue in connection with a bona
fide offering of goods or services, and
5.
Respondent
does not appear to be known by the domain name at issue;
(iii) as to STOP ¶ 4(a)(iii), that why the
domain name at issue should be considered as having been registered or used in
bad faith is that "Respondent registered the domain name [at issue] in bad
faith"; and
(iv)
that
1.
Attachment 1 to the Complaint is a copy of the U.S. Trademark Office
Notice
of Recordation of Assignment Document for
that mark,
2.
Attachment 2 to the Complaint is a copy of a State of Delaware Office of the
Secretary
of State Letter certifying the Incorporation of "Passport
Corporation",
3.
Attachment 3 to the Complaint is a copy of a State of Delaware Office of
the
Secretary
of State Letter certifying change of name of "Insync Software
Corporation" to "Passport Corporation", and
4.
said copies are documentary evidence upon which the Complaint relies,
seemingly
by being rationally probative of one or more of those STOP ¶¶ 4(a)(i),
4(a)(ii), and 4(a)(iii) contentions.
B.
Respondent
In
the Response, Respondent basically contends
(i)
as to Complainant's contention "i", regarding the manner in which the
domain at issue is identical to a trademark or service mark in which the
Complainant has rights, that PASSPORT is identical to the second level domain
name “passport” in <passport.biz> and that Respondent has no
information to substantiate any of the Complainant's alleged rights to the
trademark PASSPORT;
(ii)
as to Complainant's contention "ii", that Respondent has rights or
legitimate interests in respect to the domain name at issue in that
1. Respondent has intellectual property and
trademark rights predating Complainant's alleged rights in the trademark
PASSPORT, being the owner of two active trademark registrations for the
trademark PASSPORT and having been using the trademark in connection with a
bona fide offering of goods and services since 1980, predating Complainant's
alleged date of first use in 1987, and more particularly that
(a) Respondent's rights and legitimate
interests are based on Respondent's prior usage and incontestable registrations
of PASSPORT as evidenced by Respondent's United States Patent and Trademark
Registration No. 1,261,649 filed on 9/30/1982, five years before Complainant's
assigned registration and with a date of first use of 3/20/1980 and
(b) the second PASSPORT application by the
Respondent was filed on 5/11/1993, and matured into United States Patent and
Trademark Office Registration No. 1,918,791 with a date of first use of
9/09/1993,
2. multiple parties may have co-existing
usage of an identical term applied to different goods and services, and the
United States Patent and Trademark Office are aware of that and presently allow
there to be over sixty active trademark registrations by various entities for
the word mark PASSPORT,
3. different entities can own the same
second level domain name with a different generic top level domain, such as
.com, .biz, or .info, an example being that Microsoft Corporation is the
registered owner of the domain name <passport.com>, and
4. in view of the facts as contended in
contention (ii)(1) of this list, Respondent has its own rights and legitimate
interest in the domain name at issue and therefore does not have to be a
licensee of Complainant;
(iii)
as to Complainant's contention "iii", that the domain name at issue
was registered by Respondent in good faith in that
(1) the facts as contended in contention
(ii)(1) of this list supported
Respondent's
application to register the domain name in issue in good faith, and in a timely
fashion Respondent did so with a bona fide commercial purpose of exploiting its
well-known PASSPORT vehicles,
(2) Respondent's bona fide preparations to
register and use the domain name at issue evidence Respondent's good faith, and
more particularly
(a) Respondent initially submitted an IP
claim for the mark PASSPORT, substantially
on the basis of the facts as contended in contention (ii)(1) of this
list and
(b) on 9/17/2001 Respondent applied for the
domain name at issue through its accredited registrar and before the deadline
of 10/08/2001 Respondent notified the NeuLevel registry of its intent to
proceed with registering the domain name at issue, which was legitimately awarded
to Respondent by the NeuLevel registry and has not been cleared for use only
because there were multiple IP claimants to the domain name at issue and
Respondent is now subject to the STOP process, and
(3) in view of Response contentions (iii)(1) and (iii)(2), Complainant's
bald
assertion of bad faith is without merit,
and more particularly
(a) Respondent is not trafficking in domain
names and has not registered the domain name at issue for the purpose of
selling or renting or otherwise transferring the domain name at issue to
Complainant or to a competitor of Complainant,
(b) until this matter arose, Respondent had
never heard of or had any knowledge of Complainant,
(c) until Respondent received the Complaint,
Respondent had never received any objection to its use of the trademark
PASSPORT or to its registration as a domain name, and
(d) Respondent has not attempted to create a
likelihood of confusion with the Complainant's mark and believes there is none;
(iv) that
1. Attachment 1 to the Response is a copy of
the United States Patent and Trademark Office Current Status of Respondent's
Registration No. 1,261,649, and that said copy is documentary evidence upon
which the Respondent relies by its being rationally probative of contention
(ii)(1)(a) of this list,
2. Attachment 2 to the Response is a copy of
the United States Patent and Trademark Office Current Status of Respondent's
Registration No. 1,918,791, and that said copy is documentary evidence upon
which the Respondent relies by its being rationally probative of contention
(ii)(1)(b) of this list,
3. Attachment 3 to the Response is a copy of
the United States Patent and Trademark Office Result of Search for PASSPORT
Trademarks, and that said copy is documentary evidence upon which the
Respondent relies by its being rationally probative of contention (ii)(2) of
this list,
4. Attachment 4 to the Response is a copy of
WHOIS Search Results for <passport.com>, and that said copy is
documentary evidence upon which the Respondent relies by its being rationally
probative of contention (ii)(3) of this list,
5. Attachment 5 to the Response is a copy of
a sample of Respondent's Usage of PASSPORT Trademark, and that said copy is
documentary evidence upon which the Respondent relies by its being rationally
probative of contention (ii)(4) of this list, and
6. Attachment 6 to the Response is a copy of
Respondent's IP Claim Submission for PASSPORT, and that said copy is
documentary evidence upon which the Response relies by its being rationally
probative of contention (iii)(2)(a) of this list; and
(v)
that as to the Panel making a finding of reverse domain-name hijacking,
1. Respondent has submitted substantial
evidence and review thereof would
warrant
that finding and
2. Respondent is the legitimate domain name
holder of the domain name at issue and Complainant appears to be using the STOP
in bad faith to attempt to deprive Respondent of the domain name at issue.
C. Additional Submissions
In
Complainant's Additional Submission, Complainant basically makes the following
seven contentions:
1.
Complainant pre-registered the domain name prior to Respondent.
2.
Complainant operates a bona fide business identical in name to the name in
dispute,
whereas
Respondent does not.
3.
Complainant intends to fully utilize the name for its corporate identity,
email, intranet, etc., whereas Respondent does not.
4.
Complainant believes the primary purpose of Respondent's registration of the
name is to prevent misuse of the domain name at issue thereby compromising the
identity/marketing of their product and does not intend to put the name to
actual use. Complainant is in the software business and has no intent to use
the domain name at issue in any way that will cause market confusion or
negatively affect the identity or marketing of Respondent's automotive related
product.
5.
Respondent's trademark(s) that predate Complainant's are for products that are
no longer in production. Complainant's trademark predates Respondent's
trademark for their current product
6.
Respondent's primary method of marketing their "Passport" branded
product is via commonly known domain names <honda.com> and
<hondacars.com> which are the natural destinations typically sought out
by its consumer based customers. It seems unlikely that Respondent would make
use of a .biz domain name to market a niche sport utility vehicle (SUV).
7.
Complainant hopes that the Panel will consider and accordingly weight the
legitimate use of the site by a bona fide business such as Complainant as
having greater purpose than not being actively used providing an inefficient
brand protection strategy on the part of Respondent.
In
the Respondent's Additional Submission, Respondent basically responds to each
of those seven contentions in correspondingly numbered paragraphs, as follows:
1. Respondent was awarded the domain name at
issue according to NeuLevel's own randomized Round Robin selection process
detailed at www.neulevel.biz. Respondent had also pre-registered the
domain name at issue with a .BIZ accredited registrar on 9/17/01, during
NeuLevel's pre-registration Start-Up period.
There is no basis in the STOP Policy or Rules for Complainant's request
that this statement, even if true, be accorded any weight in the administrative
process.
2. Again, there is no basis in the STOP or
in the STOP Rules for Complainant's request that this statement be accorded any
weight in the administrative process. The STOP and the STOP Rules only require
that Respondent have rights or legitimate interests in the domain name at
issue, not that the domain name at issue be identical to the business name of
the registrant. See STOP Policy 4.
3. In addition to the evidence presented by
Respondent that it is the owner of the PASSPORT trademark, Respondent has made
demonstrable preparations to use the domain name at issue in connection with the
bona fide offering of goods and serves, including seeking protection for its
trademark under NeuLevel's IP Claim service. Respondent should not be faulted
for protecting its trademarks. The domain name at issue is not subject to being
used at the present time, as it is the subject of the STOP Process by multiple
IP claimants. Respondent's requested relief includes that the Administrative
Panel decide that no subsequent challenges under the STOP Policy against the
domain name at issue be permitted, so that Respondent may proceed with its
intention to use the domain name at issue.
4. See the response to Complainant's
Additional Submission paragraph 3.
5. Respondent's predated PASSPORT
registration is currently active, as evidenced by the current status of the registration
from the United States Patent and Trademark Office, Attachment 1 to the
Response. It is undisputed that
Respondent currently has rights and legitimate interests to the trademark
PASSPORT, and that Respondent is currently selling PASSPORT products.
6. Again, there is no basis in the STOP
Policy or Rules for Complainant's request that these statements, even if they
were true, be accorded any weight in the administrative process. It is
undisputed that the .BIZ domain was opened for businesses to be used for any
legitimate business purpose, despite the presence of the .COM domains.
7. Complainant's request that the
Administrative Panel weigh the potential uses of the Domain Name between the
Respondent (the legitimate registrant) and the Complainant should be denied. It
is not for an Administrative Panel to weigh which purported use of a domain
name carries a "greater purpose," and for this reason and to prevent
"Reverse Domain Name Hijacking" by the Complainant, the STOP Policy
and Rules clearly outline the elements necessary for Complainant to
prevail. Complainant should not be
allowed to now use the STOP Policy in bad faith and to make its own set of
rules.
2. Respondent has "rights or legitimate
interests" within the meaning of that expression as it appears in STOP ¶
4(a)(ii).
3.
In view of Finding "2", the Panel need not make a finding as
to bad faith registration, or bad faith use, by Respondent.
4. By this proceeding, Complainant has attempted reverse
domain-name hijacking.
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 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.
Lastly
under this "Introduction" subheading of this Discussion, the Panel
takes the opportunity to mention that (except for one point discussed in the
first paragraph under the last subheading of this Discussion) the discussion
under the following four subheadings of this Discussion occurs solely on the
basis of the Complaint and the Response and that, with the Respondent's
Additional Submission being entirely persuasive over the Complainant's
Additional Submission, neither Party's Additional Submission affects the
outcome of that Discussion.
Response
contention "i" basically admits Complaint contention "i".
Therefore, even if the submitted evidence is rationally probative of the facts
contended in Complaint contentions "(i)(1)", "(i)(2)", and
"(i)(3)", in respect thereof that evidence is immaterial and hence
inadmissible. Instead, for the purposes of this proceeding the facts contended
by Complaint contentions "(i)(1)", "(i)(2)", and
"(i)(3)" are ascertained by those contentions themselves, such that
the Panel finds that the domain name at issue is "identical to a trademark
or service mark in which the Complainant has rights" within the meaning of
that expression as it appears in STOP ¶ 4(a)(i).
Response
contention "ii" puts in issue Complaint contention "ii".
Therefore, to the extent that the submitted evidence is rationally probative of
establishing the facts contended in Complaint contention "ii" or
Response contention "ii", that evidence is not only material but also
relevant, and hence potentially admissible.
Response
contentions "(iv)(1)" through "(iv)(5)" appear to be true.
There do not appear to be any bars to the admissibility of any of the
Respondent's evidence, whether on the basis of irrelevancy or otherwise and so
it is admissible. Moreover, that evidence is such that it is abundantly clear
to the Panel that exactly the facts contended by Response contentions
"(ii)(1)" through "(ii)(4)" are proven. Respondent has
"rights or legitimate interests" within the meaning of that
expression as it appears in STOP ¶ 4(a)(ii).
In stark
contrast to Respondent's contentions and evidence under this subheading, there
are the Complaint contentions and evidence, all of which seem to assiduously
avoid addressing the three items of the complaint form instruction list for
STOP ¶ 4(a)(ii) even though those items appear in the Complaint itself and were
something about which Complainant surely must have been aware. (The preamble
and first item are that "The Panel may consider any relevant aspects
included in, but not limited to STOP ¶ 4(c): … Whether, the Respondent is the owner or beneficiary of a trade or
service mark that is identical to the domain name" (emphasis added).)
Even if proven, Complaint contentions "(ii)(1)" and "(ii)(2)",
being solely about the Complainant, are basically irrelevant to STOP ¶
4(a)(ii). As for Complaint contention "(ii)(3)", it would have been
obviated by Complainant doing simple due diligence pointed to by the passage
quoted above in this paragraph from STOP ¶ 4(c). As well, even if proven,
Complaint contentions "(ii)(4)" and "(ii)(5)", though about
the Respondent, are respectively merely statements of the opposite of each of
the second and third items of the complaint form instruction list for STOP ¶ 4(a)(ii).
(Those items are "Whether, before any notice to the Respondent of the
dispute, Respondent’s use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name is in connection with a bona fide offering of goods or
services" (emphasis added) and "Whether, the Respondent … has been
commonly known by the domain name, even
if Respondent has not acquired
trademark or service mark rights" (emphases added).)
See
Finding "3" hereof.
Reverse
Domain-Name Hijacking
Reverse
domain-name hijacking was contended in the Response and although the
Complainant submitted an Additional Submission it did not take the opportunity
to contend thereagainst. (See e.g., American
Nat’l Red Cross v. Habersham, FA
103926 (Nat. Arb. Forum Mar. 6, 2002), permitting the American Red Cross to
refute allegations of reverse domain name hijacking).)
As
a result of extensive and particular and persuasive Response contentions
"(iii)(1)", "(iii)(2)", "(iii)(3)", "(iv)(6)",
"(v)(1)", and "(v)(2)" as contrasted with scant and general
unpersuasive Complaint contention "iii" (which seemingly merely
repeats part of STOP ¶ 4(a)(iii)), together with the above discussion under the
subheading of "Respondent's Rights or Legitimate Interests" and the
immediately preceding paragraph, the Panel finds that, by this proceeding,
Complainant has attempted reverse domain-name hijacking.
DECISION
The Panel dismisses the Complaint and
determines that
(i) subsequent challenges to the domain name
at issue, as against the Respondent, under the STOP, shall not be permitted; and
(ii) by this proceeding, Complainant attempted
reverse domain-name hijacking.
Rodney C. Kyle, Panelist
Dated: September 3, 2002
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