Computer Patent Annuities Limited
Partnership v. Lin Z. Song
Claim Number: FA0204000112423
PARTIES
Complainant
is Computer Patent Annuities Limited
Partnership, Jersey, UNITED KINGDOM (“Complainant”) represented by Tom Farrand. Respondent is Lin Z. Song, Zhejiang, CHINA
(“Respondent”).
The
domain name at issue is <cpa.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
Alan Crary 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 April 26, 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”).
The
Response was received on June 5, one day beyond the twenty-day response period
provided for under the STOP Policy. The Panel nevertheless felt it appropriate
to consider the Response as if timely filed. It was noted that the Respondent
did not appear to be a native English speaker, therefore the Panel decided to
consider the untimely Response, following the principle that in an
administrative proceeding, wherever possible, the decision should be based on
the merits as opposed to technicalities as this better serves the interests of
justice.
On July 11, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James Alan Crary
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
Complainant is beneficial owner of trademark registrations in the United
States, the United Kingdom, and other countries. The CPA trademark is
registered in Classes 9, 35, and 42 as they relate to intellectual property
services provided by Complainant. The CPA trademark was first registered in the
United Kingdom in August 1984. The trademark is said to have been in continuous
use in 1969.
The
mark is used on publicity materials, letterheads, and on Complainant’s web
site.
The
domain name is identical to the trademark CPA in which Complainant had
established rights. The use of <cpa.biz> in that form by
the Respondent was bound to cause confusion in Complainant’s marketplace.
Complainant it was asserted is the world’s leading
provider of intellectual property support services. It manages almost 2 million
intellectual property rights on behalf of 20,000 clients worldwide. In addition
to its headquarters office in Jersey, UK Channel Islands, it maintained
regional offices in London, Washington DC, San Francisco, Paris, and Munich;
and representative offices or offices through partners in Japan, South Korea,
Australia, New Zealand, Hong Kong, Singapore, and Spain.
To
the best of Complainant’s knowledge and belief, Respondent had no legitimate
right. He used the trademark CPA. Complainant was not aware of any registered
trademarks in CPA, which were held by the Respondent, nor was it aware of any
use or intended use by the Respondent of any trademark or domain name
consisting of or containing the letters CPA.
Complainant
maintained that Respondent had registered domain names which consisted of or
contained other well-known trademarks. The domain name <555.biz> had been
registered by the Respondent, the trademark 555 was a trademark of
British-American tobacco which had been used for many years in its cigarette
business. Finally it was asserted that Respondent register the domain name for
the sole purpose of selling, renting, or otherwise selling the domain name <cpa.biz>
to the claimant.
B.
Respondent
CPA
was said to be a general word meaning Certified Public Accountant. Complainant
trademark was not used to designate Certified Public Account. CPA was a general
word long before Complainant’s trademark.
Respondent
denied that there were any circumstances indicating he had registered the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name to the Complainant
or to a competitor of the Complainant.
It
was noted that Complainant did business by the name <cpajersey.com>.
Respondent
asserted that he had plans to use <cpa.biz> for a future web
site that would consist of a directory of certified public accountants, a
purpose unrelated to Complainant’s business.
1. The Complainant is the beneficial owner
of the CPA trademark registered in the United States, United Kingdom, and other
countries and used in connection with its intellectual property business and
services. Complainant uses its CPA mark exclusively in connection with its
intellectual property business and other services.
2. Respondent registered the <cpa.biz>
domain name on March 27, 2002. Respondent has not developed a use for the
domain name.
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.
The
Panel concluded that the Complainant has established rights in the CPA mark
through substantial continuous use of the mark and on the basis of trademark
registrations, which date back to the mid-1980s.
Respondent’s
<cpa.biz>
domain name contains Complainant’s CPA mark in its entirety. But for the
inconsequential addition of “.biz” Respondent’s domain name is identical to
Complainant’s mark. Accordingly, the Panel finds the STOP Policy Paragraph
4(a)(i) has been satisfied.
STOP Policy Paragraph 4(c) sets forth
several ways in which a Respondent may demonstrate its rights or interests by
establishing:
i.
The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name;
or that also
ii.
Before any
notice to the Respondent of the dispute, its use or demonstratable preparations
for use, of 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.
The Respondent did not assert ownership
of or beneficiary status of a trade or service mark that was identical to the
domain name and further there was no evidence in the record to support such a
finding.
With regard to Paragraph 4(c)(ii) the
evidence did not support a finding that Respondent had engaged in any bona fide
offering of goods or services in connection with the domain name or that there
were demonstratable preparations for use.
Respondent merely asserts that it had a
plan to start a web business offering a directory service for certified public
accountants or a listing of certified public accounts. But Respondent’s
unsupported self-serving assertion that it has a plan to use <cpa.biz>
for a legitimate purpose was insufficient to establish that it has rights or
legitimate interests in respect to the domain name at issue. Twentieth
Century Fox Film, Corp. v. Benstein, FA102962 (Nat. Arb. Forum Feb. 27
2002). In Benstein, the base assertion that Respondent had registered
the domain name <foxstudios.biz> in order to get a web address for her
planned dance studios without supporting evidence was insufficient to establish
that she had rights or interests in the domain name at issue.
The Panel could make no finding that
Respondent had rights or legitimate interests under Paragraph 4(c)(iii). The
Respondent did not assert nor was there any evidence in the record to suggest
that Respondent had been commonly known by the domain name.
The Panel therefore concluded that the
Respondent had no rights or legitimate interests in the disputed domain name <cpa.biz>.
The Rules in Policy of the STOP Policy
differ from UDRP Claims in a very significant and fundamental way. This is
because IP claims could be registered in advance of the .biz
registration process by a trademark owner. The registrant is notified of the
potential for trademark infringement before being allowed to proceed with the
.biz registration. This has the effect of putting the Respondent on notice that
there are known trademarks using the words in the domain name that belong to a
direct or potential competitor at the time of the registration of the domain
.biz. Genelogic Inc. v. Bock, FA103042 (Nat. Arb. Forum Mar. 4, 2002).
The Panel
concluded that there was circumstantial evidence of a bad faith registration
for the purpose of preventing the Complainant, the beneficial owner of the CPA
mark from reflecting that mark in a corresponding domain name. (STOP Policy
4(b)(ii)).
Had there been
evidence that Respondent was actually using the domain name in a business or
that he had made significant preparations for use prior to notice of the
dispute, this Panel might have been able to reach different conclusion.
Respondent’s bare assertion that it had a plan for use of <cpa.biz> in the future
without any supporting evidence suggested to the Panel that he had no bona fide
purpose for the registration. Valspor Sourcing, Inc. v. TIGRE, FA112596 (Nat. Arb. Forum June 4, 2002).
The Panel
concluded Respondent had notice of the CPA mark and constructive notice of
Complainant’s rights in relation to the CPA mark. Respondent did not deny that
he had notice of the mark through the STOP process.
DECISION
The Panel found for the Complainant and
against the Respondent. In accordance with Paragraphs 10 and 15 of the STOP
Policy, it is directed that the domain name <cpa.biz> be transferred
to the Complainant, and that subsequent challenges under the Policy against
this domain name shall not be permitted.
James Alan Crary, Panelist
Dated: July 25, 2002
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