Shaker Computer & Management Services Inc. v. Lin Zan Song
Claim Number: FA0204000112472
Complainant is Shaker Computer & Management Services Inc., Latham, NY, USA (“Complainant”) represented by Kimber England. Respondent is Lin Zan Song, Wenzhou Zhejiang, CHINA (“Respondent”).
The domain name at issue is <coins.biz>, registered with Xin Net Corp.
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.
James A. Carmody, Esq., 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 April 26, 2002; the Forum received a hard copy of the Complaint on May 10, 2002.
On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 June 4, 2002.
On July 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant alleges that it holds a USPTO registration for COINS in Class 38 for goods and services in computer programs and user manuals for use in the construction industry and that mark is identical to <coins.biz>, the domain name at issue. Further, Complainant says that Respondent has no rights or legitimate interests in the domain name at issue and that, since Respondent has registered 152 domains to date, it registered the domain name at issue in bad faith for the purpose of selling or renting it.
Respondent alleges, by implication, that Complainant can have no rights in COINS because it is generic. Further, Respondent alleges that there is no evidence that it registered the domain name at issue primarily for the purpose of selling or renting it to Complainant or to a competitor of Complainant and that it has plans to use the site for exchange of coins and no activity competitive with Complainant’s Class 38 use. Accordingly, Respondent claims to have legitimate interests in the name and NOT be in bad faith.
Respondent is not known commonly as “Coins”; it has not begun any activity under that name; and it does not hold any common law or registered trademark rights in the name. Unspecific and unsupported plans of Respondent to one day host a coin exchange site with the domain name are insufficient evidence of rights or legitimate interests. 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.” 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).
Respondent has one hundred and fifty two domain name registrations and this fact, together with the registration of someone else’s registered trademark as a domain name, and the lack of a current use or articulated plan for the domain, suggest that Respondent registered the domain name at issue in bad faith with the intention to sell to Complainant or a competitor of Complainant. Where it is clear that the Respondent’s only interest in the name is to sell it, bad faith may be found. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding that, by identifying itself as “Domain For Sale VMI” in its registration information, the Respondent made clear its intent to sell the domain name for consideration in excess of its out-of-pocket costs).
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
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.
While not unique, this case involves the unusual feature of Complainant’s use of an otherwise generic term, “coins,” in an unusual way to uniquely identify computer software which would otherwise have no public association with coins in the generic sense. Obviously this unusual use is why the Complainant was given registration of the mark by the USPTO. On the other hand, were Respondent to be allowed to establish and maintain its <coins.biz> site, for the articulated future purpose of coins exchange, only a generic use of the name would be employed and, though there might be no confusion involved, Complainant’s registered trademark rights would be infringed. This brings into clear question the issue as to whether a trademark registrant of an otherwise generic mark may successfully challenge the domain name registration of that mark who seeks generic use. It would seem that an item by item finding under the STOP Policy should be made with any individual case adjustments relegated to the courts. This Panel will not presume to be more wizened than the USPTO in the initial analysis. I, accordingly find that Complainant has rights in the COINS mark which has enjoyed registration by the USPTO since 1986 for Class 38, Computer programs and user manuals. The domain name at issue is identical.
Accordingly I find that Paragraph 4(a)(1) of the STOP Policy has been satisfied.
Complainant, with demonstrated and registered rights in the COINS mark to identify its goods and services related to computers, has alleged and Respondent has failed to refute in any way, that Respondent has no rights or legitimate interests at stake. A claimed plan of Respondent to use the domain name in connection with a coin exchange site one day hence is not sufficient.
Accordingly I find that Paragraph 4(a)(2) of the STOP Policy has been satisfied.
Based on the factors articulated in the findings, the Panel finds that the domain name at issue was registered in bad faith.
Accordingly I find that Paragraph 4(a)(3) of the STOP Policy has been satisfied.
It is the decision of the Panel that the domain name at issue, <coins.biz>, be and hereby is TRANSFERRED from the Respondent to the Complainant. Further IP challenges to this domain will NOT be allowed.
James A. Carmody, Esq., Panelist
Dated: July 12, 2002
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