fabric.com v. LinZan Song
Claim Number: FA0204000109701
PARTIES
Complainant
is fabric.com, Marietta, GA, USA
(“Complainant”) represented by Stephen S
Friedman. Respondent is Lin Zansong, Wenzhou, China
(“Respondent”).
The
domain name at issue is <fabric.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 12, 2002; the Forum
received a hard copy of the Complaint on April 16, 2002.
On
April 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 13,
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 May 13, 2002.
On May 28, 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.
A.
Complainant
Complainant
alleges that it has established a common law trademark in the word “fabric”
and, in pursuit of its business since July 8, 1998, it has registered <fabric.com> and <fabric.net>. The Respondent has registered <fabric.biz> (the domain name at
issue) which is alleged to be identical to a trademark or service mark in which
Complainant has claimed rights.
Further, the Complainant alleges that the Respondent has no rights or
legitimate interests in the domain name at issue because, to the best of
Complainant’s knowledge, Respondent has never used the mark, “fabric.” Finally, Complainant alleges that Respondent
registered the domain name at issue in bad faith because it has been unable to
find any evidence that Respondent is using the mark in China, its home.
B.
Respondent
Respondent
alleges that “Fabric.com and Fabric.biz is not identical.” Further, Respondent states that FABRIC is a
“general word”, which is presumably meant to allege that “fabric” is generic
and that, accordingly, Complainant cannot have any protectable rights in the
mark. Finally, the Respondent asserts
that there are no facts alleged or which exist evidencing bad faith
registration of the domain name at issue.
Although Complainant provides no
documented support for its position of use of
the mark, “fabric,” in light of
no claim to the contrary, it will be assumed that it has used the mark and the
associated domains, <fabric.com> and <fabric.net>, in support of
its business of selling fabric over the Internet since 1998. Other than Complainant’s allegation that to
the best of its “knowledge and belief” the Respondent has never used the mark
“fabric,” there is nothing offered in the Complaint to show that the Respondent
has no rights in the mark or that the Respondent registered the domain name at
issue in bad faith.
The threshold
question, however, is whether the Complainant has anything to protect. Because I find that “fabric” is obviously
generic, particularly in its use by the Complainant “…selling fabric to
Internet customers throughout the world…,” I find that Complainant has no
protectable rights in the mark. It is
thus unnecessary to determine whether Respondent established legitimate
interests in the domain name at issue and registered <fabric.biz> in bad faith. Vietnam Venture Group v. cosmos consulting gmbh, FA 102601
(Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the
Complainant did not hold a registered trademark in VVG, and (2) the Complainant
did not demonstrate sufficiently strong identification of its mark such that
there would be recognition among Internet users that the VVG mark identified
goods or services unique to the Complainant).
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.
Because
“fabric” is a generic term, neither the Complainant, nor the Respondent, have
demonstrated protectable rights in such a mark. Accordingly, Paragraph 4(a)(i) of the STOP Policy has not been
satisfied.
As noted above, Respondent has not
alleged or proved facts which would suggest that “fabric” is anything other
than a generic term as used by Respondent.
Accordingly, Respondent does not have the right to exclude others from
the use of such a mark, as embodied in a domain name or otherwise.
Since the Complainant has failed to
demonstrate protectable rights in a mark identical to the domain name at issue,
it is not necessary to determine if <fabric.com>
was registered in bad faith.
DECISION
Accordingly, this Panel orders that the
domain name at issue, <fabric.biz>,
not be transferred from the Respondent to the Complainant. Pursuant to STOP Policy Paragraph
4(l)(ii)(3) subsequent challenges under this Policy shall be permitted.
James A. Carmody, Esq., Panelist
Dated: June 1, 2002
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page