Travel.biz International Pty Ltd v.
Claim Number: FA0205000114418
Complainant is Travel.biz International Pty Ltd, Greenwich, AUSTRALIA (“Complainant”) represented by David M Upton. Respondent is Blacker Media, Los Angeles, CA, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
The domain name at issue is <travel.biz>, registered with Signature Domains.
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.
David A. Einhorn 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 May 25, 2002; the Forum received a hard copy of the Complaint on June 1, 2002.
On June 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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 July 18, 2002.
On July 31, 2002, pursuant to STOP Rule 6(b), the Forum appointed David A. Einhorn as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
[a.] The company Travel.biz International Pty Ltd is a registered company under the corporations law of New South Wales, Australia. As such:
name <travel.biz> is identical to the trading name of this
The company was registered with the intent of functioning as a travel agency in an online e-commerce environment;
The association between the Business Names Travel.biz International Pty Ltd and the domain name <travel.biz> is an essential component of the marketing and advertising strategy of this company; and
Internet users will associate the domain name <travel.biz> with this company name.
[b.] The Respondent should be considered as having no legitimate interests in the domain name <travel.biz> as the Respondent, as part of the .biz name allocation process, has registered the following highly desirable domains across a wide spectrum of vastly different business areas:
[c.] Based on the list of domains registered by Blacker Media, it appears that the domain <travel.biz> has been registered in bad faith, and that the Respondent is in the business of speculative domain registration, for the purposes 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.
[a.] Complainant does not have a trademark that is identical to the disputed domain. Complainant has merely presented evidence of a trade name. A trade name does not provide enforceable rights under the STOP Policy, nor has Complainant presented any evidence of common law rights.
[b.] Complainant has provided no evidence to support its contention that Respondent lacks legitimate interests in the disputed domain. Respondent has a legitimate interest in the disputed domain because <travel.biz> incorporates the common word “travel,” and Respondent is seeking to register it for a website that provides travel resources. Furthermore, Respondent is using the term for a related website at its Consumer Network Website located at <consumernetwork.biz>. A preliminary site is published at http://126.96.36.199.
[c.] There is no evidence of bad faith registration or use. Complainant has not provided any evidence that the disputed domain was registered to sell it to Complainant, to disrupt Complainant’s business, to prevent it from reflecting its mark in a domain name, or to confuse consumers. Plaintiff’s allegation that Respondent has registered nine (9) other .BIZ domain names is not an indication of bad faith. Each of these domain names incorporate common terms. Furthermore, preliminary websites for each of these domain names have been developed for and are linked from Respondent’s <consumernetwork.biz> website.
[d.] Complainant has engaged in Reverse Domain Name Highjacking. Complainant has instituted this proceeding involving a generic term on the basis of a trade name which it has not even used and which is not identical to the disputed domain.
Complainant has not established trademark rights in the generic term TRAVEL.
STOP proceedings are concerned with the assertion of rights based on trademarks and service marks, not on trade names.
Respondent has not established that it has rights or other legitimate interests in the term TRAVEL.
Complainant has engaged in Reserve Domain Name Hijacking.
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 should properly involve 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 asserts rights based on a trade name only. STOP proceedings are concerned with the assertion of rights based on trademarks and service marks, not based on trade names. See AMR Corp. v. Hiran, Costa Verges FA 112519 (Nat. Arb. Forum, July 11, 2002); see also MaCS GmbH v. Macfarlanes, FA 112448 (Nat. Arb. Forum, July 3, 2002).
Accordingly, Paragraph 4(a)(1) of the STOP Policy has not been satisfied by Complainant.
Paragraph 4(c) of the STOP Policy addresses three circumstances which can demonstrate a registrant’s rights or legitimate interest in a Disputed Domain Name:
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 not established rights in the term TRAVEL. Respondent has alleged that it has made demonstrable preparation to use the domain name through its use of the preliminary website http://188.8.131.52 and through its website consumernetwork.biz. However, Respondent does not allege that those usages occurred before notice to it of this STOP dispute. Such is a required element under Paragraph 4(c)(ii) of the STOP Policy.
Accordingly, Paragraph 4(a)(2) of the STOP Policy has not been satisfied by Complainant.
In accordance with STOP Rule 1(c), Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
The Panel notes that Complainant did not demonstrate trademark or service mark rights in the disputed domain name. Incorporation of a business under a name consisting of a generic term followed by .BIZ is not a legitimate method of obtaining rights for use in depriving another party of a domain name.
Based on this, the Panel hereby issues a finding that the Complainant has attempted Reverse Domain Name Hijacking.
The Complaint of Travel.biz International Pty Ltd. with respect to the domain name <travel.biz> is hereby dismissed. Accordingly, this Panel orders that the domain name at issue not be transferred from the Respondent to the Complainant.
As Respondent has not shown that it has any rights or legitimate interests in the <travel.biz> domain name, subsequent challenges under the STOP Policy against this domain name shall be permitted.
David A. Einhorn, Panelist
Dated: August 14, 2002
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