Carol Shedrick d/b/a Stanford Limousine
LLC v. Charles Princeton d/b/a Net Solutions
Claim Number: FA0402000236575
PARTIES
Complainant
is Carol Shedrick d/b/a Stanford Limousine LLC (“Complainant”),
825 San Antonio Rd. #101, Palo Alto, CA 94303. Respondent is Charles Princeton d/b/a Net Solutions (“Respondent”),
represented by Arlo Hale Smith, 66
San Fernando Way, San Francisco, CA 94127.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <stanfordlimo.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 9, 2004; the Forum received a hard copy of the
Complaint on February 11, 2004.
On
February 11, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <stanfordlimo.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
February 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 11, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@stanfordlimo.com by e-mail.
A
timely hard copy of the Response was received on March 10, 2004. However, the
electronic copy of the Response required by UDRP Rule 5(a) and (b) was not
received in a timely fashion, and is thus not in compliance with the Rules. For
reasons explained below, the Panel chose to accept the Response.
On March 19, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Jacques A.
Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Rights in the Mark/ Identical or Confusingly
Similar
Stanford
Limousine, LLC is an authorized carrier, having made written application to the
Public Utilities Commission (“PUC”) of the State of California for a permit to
operate as a CHARTER PARTY CARRIER OF PASSENGERS.
Stanford
Limousine, LLC was registered as a Limited Liability Corporation on July 21,
2000 and a fictitious business name statement for “Stanford Limousine” was
filed with the County of Santa Clara California on October 27, 1999. The domain
name <stanfordlimousine.com> was created and registered on December 8,
1999 to be the company’s web site and Internet destination for Stanford
Limousine, LLC’s customers.
On March
26, 2002, Mr. Charles Princeton d/b/a Net Solutions registered the domain name
<stanfordlimo.com> on behalf of one of his customers in the
limousine business and operating in the same geographical area. Since “limo” is
short for “limousine”, <stanfordlimo.com> is then confused as
being the official web site for Stanford Limousine, LLC since they offer the
same services.
Respondent operates a limousine company
out of the San Francisco Bay Area named “San Francisco Limo” for which it owns
the domain name <sanfranciscolimo.com>. Customers landing at the <stanfordlimo.com>
web site are misled into thinking that Stanford Limousine, LLC is
affiliated with San Francisco Limo.
Respondent
is not a California registered corporation, nor has it applied for a fictitious
business name. Respondent has never
operated or existed or done business under “Stanford Limo”, nor does it have a
license from the PUC of the State of California to operate as a CHARTER PARTY
CARRIER OF PASSENGERS under the name “Stanford Limo”.
By using
the domain name <stanfordlimo.com>, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s web
site, by creating a likelihood of confusion with Stanford Limousine, LLC’s mark
as to the affiliation of Respondent’s web site. In StanfordLimo.com’s “About Us”
page, Respondent ostentatiously lies by pretending to be a legitimate company
and being a member of the “National Limousine Association”, which it is not
since the entity “Stanford Limo” does not exist.
B.
Respondent
Respondent
has been operating a transportation business as Airport Commuter Limousine and
Sedan Service, Inc. since 1986.
Respondent
has registered this Stanford Limo as one of its fictitious business names and
has notified the California PUC that Airport Commuter Limousine and Sedan Service,
Inc. does business under said the name “Stanford Limo”.
Complainant
has no protectable interest in “Stanford Limousine”. It is clear that the word
“limousine” or “limo” is in common use and is “regarded by law as common
property”. More fundamentally, “limousine” or “limo” is “descriptive of goods
or services” and therefore cannot become protected for use by any one
party. “Stanford” is, likewise, a name
in very common use. Moreover, “Stanford” is a geographical term – referring to
the geographical area near the Campus of Leland Stanford, Jr. University. Respondent’s business operates in that
geographical area, giving him equal rights with Complainant to use the same
name.
DISCUSSION & FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (the “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 Policy requires that the Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been
registered and is being used in bad faith.
The
Panel was informed that the hard copy of
the Response was received in a timely fashion but that the electronic copy was
not.
As decided in Telstra Corp.
v. Chu, D2000-0423 (WIPO June 21, 2000), any weight to be given to the
lateness of the Response is solely in the discretion of the Panel.
The Panel finds that Respondent
failed to timely submit a Response to the Forum. Therefore, stricto sensu,
Respondent did not comply with ICANN Rule ¶ 5, which reads as follows:
“The
Response
(a) Within twenty
(20) days of the date of commencement of the administrative
proceeding Respondent shall submit a response to the Provider.
(b) The response shall be
submitted in hard copy and (except to the extent not available for annexes) in electronic form …”
While the Panel is under no
obligation to accept the deficient Response, the Panel nevertheless accepts it
as it has been sent, subject of course to its substantive value. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002), wherein it was ruled that declaring a Response inadmissible because of
formal deficiencies would be an extreme remedy not consistent with the basic
principles of due process.
Although
Respondent provided no explanation with regards to its failure to timely send
an electronic copy of its Response, Panel notes that Complainant suffered no
damage from this procedural deficiency. This, under normal circumstances, would
be regarded as unacceptable and unjustified, however, given the insignificant
impact it has on the proceedings and that this is an arbitration, which by
definition should remain open and flexible, the Panel allows Respondent to make
its case before this Panel.
It
is trite law that the UDRP Policy and Rules are intended to allow dispute
resolution of those cases that fall squarely within the scope of such Rules,
that is those trademark owners that have been targeted with the growing
popularity of the Internet.
As
it was stated in The Management of
Internet Names and Addresses: Intellectual Property Issues, the Final
Report of the WIPO Internet Domain Name Process, dated April 30, 1999, at
paragraph 169, "It is recommended that the scope of the administrative
procedure be limited to the abusive registration of domain names . . . ." See
also Summit Indus., Inc. v. Jardine
Performance Exhaust Inc., D2001-1001
(WIPO Oct. 15, 2001) wherein it was stated that the UDRP is designed to deal
with simple cases of cybersquatting.
The
prerequisite is therefore that Complainant is the owner of trademark rights,
whether registered or not. In as much as a trademark distinguishes wares and
services, a trade name serves to distinguish the business of a trader and need
not have the same attribute of distinctiveness.
While
conceptually, nothing prevents a trade name from also being (or becoming) a
trademark, in the absence of evidence of that, it cannot be construed as such.
And it cannot be said that a trade name offers, at law, the same advantages as
trademarks for UDRP proceedings.
Complainant
asserts it was incorporated in July 2000, under the name “Stanford Limousine,
LLC.” The Panel finds that the
“Stanford Limousine, LLC” name may be viewed as Complainant’s trade name.
However, as stated in Univ. of Konstanz
v. uni-konstanz.com, D2001-0744
(WIPO Oct. 18, 2001), the UDRP Policy’s scope did not encompass trade names in
its definition of “Mark” in which the Complainant has rights. See also Sintef v. Sintef.com, D2001-0507 (WIPO June 21, 2001)
wherein it was found that “trade names as such are, however, not the subject of
the current Policy”.
Nothing would prevent “Stanford Limousine, LLC” as a
trade name, from also being considered, under some circumstances, as distinctive and thus being used by Complainant
as a
trade mark so as to distinguish
its services, if proper evidence was adduced to that effect, which was not done
in the present case. As stated in Stadshypotek
Bank AB v. Customer Service, D2003-0342
(WIPO June 19, 2003), “the Complainant can assert trademark rights when the
Panel can conclude from the circumstances of the case and the evidence brought
to its knowledge that the Complainant is the holder of a distinctive
designation for a certain category of products and services.” The Panel relies
on the findings in Music United.com AG v.
Nauta, D2000-1019 (WIPO
Nov. 7, 2000): “ No circumstances have been submitted in the case to suggest
that the company name is actually also a trademark or service mark, even if it
seems to have been used to identify Complainant’s activities and thus, at least
partially, fulfils the functions of a trademark. Obviously, the company name
had not at this point been registered as a trademark. There is not sufficient
evidence available to the Panel to consider whether a trademark right may have
been acquired through the use of the company name for the purpose of
identifying Complainant’s goods or services.”
Moreover,
Complainant’s website is located at <stanfordlimousine.com>, which was
registered on December 8, 1999. Panel takes notice of the findings in the
majority decision in Delta Air Transport
NV (trading as SN Brussels Airlines) v. De Souza, D2003-0372 (WIPO Aug. 5, 2003) wherein it was stated that “The
Respondent is using the Domain Names as unique identifiers and they are thus
serving the purpose of trade marks…The Complainant has put its case at risk by
not putting more evidence before the Panel. That is, by way of reliable
evidence of actual use to establish unregistered trademark rights.” However, in
the case at hand, Complainant has done very little, if any, in order to
demonstrate or attempt to demonstrate any form of common law rights in
“Stanford Limousine”. This illustrates that bare allegations alone cannot be
considered as such, as they must be supported by “some” evidence. Under such
circumstances, the Panel has little choice but to conclude, on a procedural
ground, that the minimal burden has not been met on this element.
[JAL1]In addition, Respondent contends that
Complainant has no enforceable rights in the STANFORD LIMOUSINE mark, as it is
a common name, a geographical identifier, and [JAL2]a simple tradename. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum
May 19, 2003) wherein it was held that simply operating under a business name
does not, per se, constitute
secondary source identification sufficient to warrant a finding of common law
rights in a mark); see also Pocatello
Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002) wherein it was stated that "geographic terms are rarely, if
ever, protected by trademark law because to do so would preclude others from
using such words in a descriptive manner . . .[t]o hold otherwise would preempt
the nominative or descriptive use necessary to refer to the location in
question". Various Administrative Panels also found that the addition of a
geographic descriptor does not change the confusing nature of the similarity
(e.g. Telstra Corp. Ltd. v. Ozurls,
D2001-0046 (WIPO Mar. 27,
2000); Wal-Mart Stores, Inc. v. Lars Stork,
D2000-0628 (WIPO Aug. 17, 2000) and Am.
Online, Inc. v. Dolphin@Heart,
D2000-0713 (WIPO Sept. 5, 2000)).
Given
the above, the Panel concludes that Complainant has failed to establish any
rights in the STANFORD LIMO mark pursuant to Policy paragraph 4(a)(i).
Hence,
there is no use for the Panel to undertake the analysis of the prongs set forth
under Policy paragraphs 4(a)(ii) and (iii).
The
Panel wishes to point out however that this finding is made in the context of
the very narrow scope of the UDRP procedure, where Complainant must absolutely
meet a real burden imposed upon it with concrete evidence on each of the three
elements, since the Panel is in no position to presume of any rights that could
be alleged by either party. This decision is therefore made under reserve of
Complainant’s ability to demonstrate its rights before another forum, i.e. a
court of competent common law jurisdiction.
DECISION
Not
having established the first element required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Jacques A. Léger,
Q.C., Panelist
Dated: April 2, 2004
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