Australian Postal Corporation v. Aly Ramzan
Claim Number: FA0208000123884
Complainant is Australian Postal Corporation, Melbourne, AUSTRALIA (“Complainant”) represented by Frank R. Reinthaler, of Australian Postal Corporation. Respondent is Aly Ramzan, Karachi, PAKISTAN (“Respondent”).
The domain name at issue is <postoffice.biz>, registered with Tucows, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 August 27, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.
On October 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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 November 18, 2002.
On December 12, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <postoffice.biz> domain name is identical to Complainant’s P POST OFFICE mark.
2. Respondent does not have any rights or legitimate interests in respect of the <postoffice.biz> domain name.
3. Respondent registered the <postoffice.biz> domain name in bad faith.
Respondent, Aly Ramzan, contends that <postoffice.biz> is owned by a Pakistani company that has been an Internet Service Provider (“ISP”) since 1997 and in business of Internet mail, online messaging and Internet commerce. Respondent contends that the “Post Office” name is generic and is used worldwide in every country and that most countries use the words “Post Office” for their Postal Service.
Respondent claims to be in the business of running a virtual Post Office. “Our Website and supporting partnerships to launch this business is under process and we will use the name postoffice.biz in first quarter of 2003 and it will be integrated with our complete product line.”
Complainant, Australian Postal Corporation, claims ownership of numerous trademark and service mark registrations in Australia for the marks incorporating the words POST and OFFICE. The Complainant identifies, in particular, Australian application No. 910736 for the word mark P POST OFFICE in connection with mail delivery services and courier services.
Respondent, Aly Ramzan, claims to have been in the virtual post office business for about 5 years through multiple messaging and mail services. Respondent claims to be the first Internet Service Provider in Pakistan to introduce IMAP web based mailing service in Pakistan.
Respondent is not the owner of a mark that is identical to 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 has an Australian trademark application for P POST OFFICE (No. 910736). Complainant’s application for a trademark for POST OFFICE was rejected (No. 759015). Under STOP Policy, Complainant must show that the domain name is identical to a trademark or service mark in which Complainant has rights. The letter “P” distinguishes Complainant’s Trademark P POST OFFICE from the term “Post Office.” As a result, Complainant has failed to show that the domain name is identical to a trademark or service mark in which it has rights. See Easy-Flo Vacuum Systems Ltd. V. InfositeServer, FA 112530 (Nat. Arb. Forum June 17, 2002) (<potatoes.biz> not identical to trademark “potatobiz”; see also Osborne Clarke v. Blacker Media, DBIZ2002-00262 (WIPO July 15, 2002) (domain name <games.biz> not identical to trademark “gamesbiz”); see also
Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb.23, 2002) (COMMINVEST mark not identical to <cominvest.biz>).
Complainant has not argued nor shown common law rights in the term POST OFFICE. The UDRP does not distinguish between registered and unregistered marks. United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000). Common law trademark or service mark rights will support a domain name complaint under the UDRP. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
In United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001), the Panel found the domain name <postoffice.com> to be identical to the United States Postal Service’s common law trademark POST OFFICE and confusingly similar to its registered trademark UNITED STATES POST OFFICE. See also United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000) (finding Complainant has common law rights in the term POST OFFICE). However, here, Complainant has failed to show common law rights in the term POST OFFICE.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.
“Respondent may fairly use descriptive or generic terms as a commercial domain name.” Eastbay Corporation v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”). The mark POST OFFICE may be a “common generic expression in which the Complainant cannot have exclusive rights.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent has failed to furnish any information that would indicate it has a service mark or trademark in the POST OFFICE name or the identical domain name. Therefore, Respondent is presumed not to have any rights or legitimate interests pursuant to the STOP ¶ 4(c)(i) with respect to the disputed domain name.
A respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). However, Respondent has not used the domain name <postoffice.biz>. Respondent claims to be making preparations to use the domain name in connection with a business website in 2003; however Respondent has not shown any concrete evidence in support of such plans. See Do The Hustle, LLC v. Tropic Web, supra. (“once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by concrete evidence that it has rights to or legitimate interests in the domain name at issue. . . . ‘Concrete evidence’ constitutes more than personal assertions.”). STOP Panels have found that a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue). Without supporting evidence, a mere claim by a respondent that it is preparing to launch a business associated with the disputed domain name is not an example of an offering of bona fide goods or services.
Finally, a Respondent may demonstrate its rights or interests in a domain name by proving that it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights. STOP Policy ¶ 4(c)(iii); See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Respondent is not commonly known as POST OFFICE or <postoffice.biz>.
There has been a prior STOP proceeding in respect to <postoffice.biz>. See Consignia Plc and Post Office Limited v. Aly Ramzan, D2002-00180 (WIPO Aug. 6, 2002). In Consignia, the Panel found that the Respondent, Aly Ramzan, had failed to show use or demonstrable preparations to use the domain name before any notice of the dispute. Likewise here, Respondent has failed to show by concrete evidence use or demonstrable preparations to use the domain name.
The Panel therefore finds that Respondent has no right or legitimate interest in the disputed domain name. Since Complainant has failed to show that the domain name is identical to its trademark or service mark and Respondent has failed to show rights or legitimate interests in the domain name, it is unnecessary for the Panel to consider the third element of bad faith. Pursuant to STOP Rule 15(e)(iii), subsequent challenges against the domain name shall be permitted.
Complainant having failed to prove the requirements of the STOP Policy, the Panel dismisses the Complaint. However, subsequent challenges to <postoffice.biz> shall be permitted.
The Honorable Charles K. McCotter, Jr.
Dated: December 20, 2002
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