main v. Morris Communications
Claim Number: FA0204000110806
PARTIES
Complainant
is main, Kirkland, WA
(“Complainant”) represented by Roger
Lowe. Respondent is Morris Communications, Augusta, GA (“Respondent”)
represented by Timothy E Moses.
The
domain name at issue is <main.biz>,
registered with EMarkMonitor, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”). Complaint
as Complainant 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 24, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 5,
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 5, 2002.
Complainant’s
Additional Submission was received after the deadline established for
submissions. Therefore, the Forum does not consider Complainant’s Additional
Submission to be in compliance with STOP Supp. Rule 7. Respondent’s Additional
Submission was also received after the deadline established for submissions.
The Forum finds Respondent’s Additional Submission to be in violation of STOP
Supp. Rule 7.
On July 16, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single Panelist.
Due to exceptional circumstances, the Panel was granted
an extension until August 17, 2002 with which to render its decision.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
Complainant
urges that Respondent registered a domain name, <main.biz>, that
is identical to Complainant’s “main” trade name. Complainant urges that Respondent has no legitimate interest in
the trade name or domain name.
Complainant further urges that Respondent acted in bad faith.
B. Respondent makes the following points in
response:
Respondent
urges that Complainant has no standing to bring a STOP Complaint because
Complainant seeks to protect a trade name filed pursuant to the laws of
Washington State rather than to protect a registered trademark. Respondent
concedes that Respondent has no such mark in any state but asserts that it has
rights at least equal to Complainant and that the mark is generic. Respondent
states that Respondent did not act in bad faith but concedes that it has made
no use of the domain name in issue.
C. Additional Submissions
Complainant
and Respondent’s Additional Submissions were untimely and not considered
pursuant to Forum Rules.
Complainant owns the “main” trade name by virtue of
registration as a sole proprietorship in Washington State. Complainant has used the trade name since
1998 but registered the name December 7, 2000. The trade names “main,”
“main.net,” “main.biz,” and “main.info” were registered at that time.
Respondent
registered the disputed domain name, <main.biz> on March 27, 2002.
Respondent,
from Georgia, has not registered “main” in that state or any other and has not
registered a similar name. Respondent
is not known by the trade name “main” and none of Respondent’s existing
businesses have a relationship to the name “main.”
The
record is not clear as to whether or not Respondent knew or should have known
of Complainant’s use of the “main” trade name at the time Respondent registered
the domain name in issue <main.biz>. The disputed domain name is identical to Complainant’s “main” and
“main.biz” trade names.
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 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 Complainant has rights; and
(2) 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.
A
Complainant may establish rights in its mark at common law. See Crazy Creek Prods., Inc. v. Siemen’s
Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the
Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law
rights in the CRAZY CREEK mark).
Complainant established that it has rights in the “main” trade name
through registration in Washington State and through Complainant’s use of the
“main” trade name in commerce.
The
domain name registered by Respondent, <main.biz>, contains
Complainant’s entire “main” trade name as well as Complainant’s “main.biz”
tradename. Respondent’s domain name adds only the inconsequential “.biz” to Complainant’s
“main” trade name. Therefore,
Respondent’s domain name is identical to two different versions of
Complainant’s trade name, “main,” and “main.biz.”
However,
Respondent contends that Complainant has no standing because the trade name is
generic. The Panel finds that “main” standing alone is a generic term and that
in order to show an exclusive right to use the name, Complainant must produce
sufficient evidence to show that “main” is so established in the mind of the
public with goods, products or services that the term has acquired unique or
secondary meaning independent of Complainant.
Complainant did not make this showing and did not show that the trade
name itself is sufficiently well known to have acquired national or
international status. See computer.biz v. Manski, FA 114300 (Nat. Arb.
Forum Aug. 1, 2002) (finding that “Complainant is using the word computer.biz
generically to describe its computer business, and it has failed to demonstrate
sufficiently strong identification of its mark to establish secondary
meaning”); see also A.O. Smith Corp. v. Rheem Solar Centre, FA 114389
(Nat. Arb. Forum July 31, 2002) (finding that Complainant, a water heater
manufacturer, did not have rights in HOTWATER even though it operated a website
at <hotwater.com> for six years because it failed to provide evidence of
secondary meaning); see also Exxon Mobil Corp. v. Marco Publ’g Corp., FA
112534 (Nat. Arb. Forum July 10, 2002) (denying Complainant’s claim because
Complainant failed to provide either proof of registration of its alleged
ENERGY mark or evidence of secondary meaning in the mark).
Cases brought pursuant to the UDRP or STOP Policy must
show common law or legal trademark rights.
The filing of a company name, standing alone, will not meet this burden. See
Cyperimprints.com, Inc. v. Alberga,
FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, without further
evidence of common law trademark, the Complainant did not establish rights to
the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by
registering its company name CYBERIMPRINTS.COM, INC. with the California
Secretary of State).
Complainant
failed to show trademark rights at common law. See Cyberimprints.com, Inc.
v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding Complainant
failed to prove common law trademark rights because it did not prove
CYBERIMPRINTS.COM was used to identify the source or sponsorship of goods or
services or that there was strong customer identification of the mark as
indicating the source of such goods or services); see also Lowestfare.com LLA v. US Tours & Travel,
Inc., AF-0284 (eResolution Sept. 9, 2000)
(finding that marks classified as descriptive cannot be protected unless
secondary meaning is proven and to establish secondary meaning the Complainant
must show that the public identifies the source of the product rather than the
product itself).
The
Rules do not make it impossible for a Complainant to prevail where the
trademark or name is based on a generic term. See Biologische Heilmittel
Heel GmbH v. Chuck Crews, FA 105902 (Nat. Arb. Forum May 9, 2002)
(transferring <heel.com> to Complainant, which held a registered
trademark in “-HEEL”). Here, however,
Complainant has failed to show unique or secondary meaning attaching to its
“main” trade name.
The Panel finds that Complainant has
rights to and interests in the “main” and “main.biz” trade names but that
“main” is a generic term and Complainant has not shown an exclusive right to
use a generic term pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has
no rights or legitimate interests in the “main” trade name and would thus have
no rights in the <main.biz> domain name.
Under
STOP Policy ¶ 4(c), the Respondent may demonstrate its rights or interests by
proving:
i.
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.
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
may demonstrate its rights/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). But 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.” 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
urges that it had begun development and attached a copy of a web page showing a
street sign bearing the <main.biz> name. This showing did not include
proof of actual use of the name prior to the filing of a STOP
Complaint. Respondent asserts that he intends to develop the <main.biz>
site to encourage and guide those interested in restoring urban areas. But Respondent has not shown actual use and
development that would support a claim of
“use of, or demonstrable preparations to use” such as would satisfy STOP
Policy ¶ 4(c)(ii). See Am. Airlines
Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24,
2002) (finding that, where the Respondent continuously operated a website at
<americanway.com> for over five years in connection with the sale of its
video series “The American Way of Training Hunters & Jumpers,” such
activity satisfied the requirements of STOP Policy ¶ 4(c)(ii) in regard to the
identical domain name <americanway.biz>).
Respondent moreover concedes that
Respondent has no trademark or other interest in the “main” trade name, that it
did not file a trademark application prior to the filing of this Complaint, and
that it has not used the “main” trade name in commerce prior to filing the
domain name in dispute.
But Respondent asserts that at the very
least Respondent has the same rights that Complainant has in the “main” name.
Respondent offered no proof that satisfies STOP Policy ¶ 4(c)(i) because
Respondent denied having an interest other than one equal to Complainant. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests under the UDRP where no such right or interest is
immediately apparent to the Panel and Respondent has not come forward to
suggest any right or interest it may possess).
Respondent’s position would have benefited from such proof under STOP
Policy ¶ 4(c)(ii). See Woolworths plc. v. Anderson, D2000-1113
(WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the
domain name for a legitimate purpose, the burden of proof lies with the
Respondent to demonstrate that it has rights or legitimate interests); see
also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
(finding that in order to show rights or legitimate interests in the disputed
domain name Respondent must establish with valid evidence “a course of business
under the name, or at least significant preparation for use of the name prior
to learning of the possibility of a conflict” with an IP Claimant).
The Panel knows Respondent as Morris
Communications and no evidence suggests that Respondent is commonly known as
“main” or <main.biz>.
However, where a trademark arises from a
generic word as it does here; and secondary meaning has not been established,
as the Complainant has failed to do here, the burden does not shift to
Respondent to prove exclusive right or interest but remains with Complainant to
establish that Respondent has no interests. See FreedomCard, Inc. v. Kim,
D2001-1320 (WIPO Jan. 20, 2002) (“Were the trademark a well-known invented word
having no descriptive character, these circumstances would shift the onus to
Respondent to demonstrate its rights or legitimate interest in the disputed
domain name... [b]ut the mark FREEDOM CARD is a common generic expression in
which the Complainant cannot have exclusive rights”); see also Car Toys, Inc. v. Informa Unlimited, Inc.,
FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights
and legitimate interests in the domain name where Complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark); see also CRS
Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000)
(finding that “concierge is not so associated with just one source that only
that source could claim a legitimate use of the mark in connection with a
website”) and Shirmax Retail Ltd. v. CES
Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“given the generic nature
of the domain name, [Respondent] has at least a tenable argument that its use
on the web merely for the purpose of redirecting visitors to a different site
constitutes a legitimate fair use, as long as this use is not misleading to
consumers and does not tarnish a trademark”)
The
Panel finds, therefore, that Complainant has failed to show that Respondent has
no rights in the disputed domain name. See London Special Risks Ltd. v.
Wooho T&C d/b/a RGnames, FA 112505 (Nat. Arb. Forum July 31, 2002)
(finding that, although Complainant held rights in the ANGEL mark and
Respondent had not proven its rights in the <angel.biz> domain name,
Complainant failed to affirmatively prove Respondent’s lack of rights in the
domain name); see also New Cargo Furniture, Inc. v. BDG Mktg., FA 114606
(Nat. Arb. Forum July 31, 2002) (finding that the Respondent demonstrated
rights or legitimate interests in the domain name <cargo.biz> by
providing evidence of future website content to be hosted at the domain related
to its transportation services business); see also Financial Aid.com LLC v.
Schaffhausen, FA 109368 (Nat. Arb. Forum July 31, 2002) (finding that
Respondent had rights in the domain name <financialaid.biz> where
Complainant held a service mark in FINANCIALAID, because Respondent
demonstrated preparation to use the domain name in relation to its service of
providing financial aid information); see also HempWorld, Inc. v. Payne,
FA 112513 (Nat. Arb. Forum July 9, 2002) (finding that Respondent demonstrated
rights in <hemp.biz> by proving the existence of its company, “Canada
Hemp Company”)
Accordingly, the Panel finds that Complainant
has failed to show that Respondent has no rights and legitimate interests in
the disputed domain name. The Panel declines to find that Respondent has such
rights under STOP Policy ¶ 4(a)(ii) but finds that STOP Policy ¶ 4(a)(ii) has
not been satisfied.
The submissions permit an inference that
Respondent had actual notice of Complainant’s rights in the “main” trade name
at the time Respondent registered the disputed domain name due to notice from
the STOP registration procedure.
Respondent’s registration of <main.biz>, despite knowledge
of Complainant’s rights, may constitute bad faith registration under STOP
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence
of bad faith includes actual or constructive knowledge of a commonly known mark
at the time of registration); see also Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”); see also Gene Logic Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the
STOP Policy and the notice given to Respondent regarding existing IP Claims
identical to its chosen domain name precluded good faith registration of
<genelogic.biz> when Respondent registered it with “full knowledge that
his intended business use of this domain name was in direct conflict with a
registered trademark of a known competitor in exactly the same field of business”).
Having determined that the Complaint
should be dismissed, the Panel declines to make a finding of bad faith under
STOP Policy ¶ 4(a)(iii) since Complainant failed to establish a right to
exclusive use of the trade name contained within the disputed domain name.
Having failed to establish all three
elements required under the STOP Policy, the Panel concludes that the requested
relief cannot be granted and that the Complaint should be and it is hereby DISMISSED.
Further challenges against this domain name SHALL be permitted under the
STOP Policy.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 17, 2002
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