West Coast Computer Products v. Freedom
Communications Inc.
Claim Number: FA0204000112434
Complainant
is West Coast Computer Products,
Culver City, CA (“Complainant”). Respondent
is Freedom Communications Inc, Lake
Forest, CA (“Respondent”).
The
domain name at issue is <socal.biz>,
registered with 123 Registration, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 May 20, 2002.
On
July 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 29,
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”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On August 14, 2002, pursuant to STOP Rule 6(b), the
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <socal.biz> domain
name is identical to Complainant’s SOCAL mark.
2. Respondent does not have any rights or
legitimate interests in the <socal.biz> domain name.
3. Respondent registered the <socal.biz>
domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
Since
1994, Complainant has used the SOCAL.COM moniker to promote and identify itself
as a publisher and a directory for the geographic locale of Southern
California. Complainant asserts that SOCAL.COM is a trademark associated with
its publishing and directories, thereby acting as a source identity for its
products and services.
Respondent
registered the <socal.biz> domain name on March 27, 2002.
Complainant’s Submission contends that Respondent is involved in the same industry
offering nearly identical goods and services. Respondent allegedly contacted
Complainant attempting to transfer the domain name.
Complainant
includes a detailed analysis of Neulevel’s alleged mishandling of the
registration process. The following brief synopsis describes Complainant’s
frustration:
In
October 2001, Complainant contends that it originally registered <socal.biz>
during the pre-registration process. Soon following, Complainant was notified
that the subject domain name’s registration had been placed on hold pending a
Los Angeles Superior Court decision. Complainant was also notified of a dispute
involving the SOCAL trademark by the company Solvay located in France. On
November 8, 2001, Complainant believed they were once again registered to
acquire the <socal.biz> domain name registration. However, on
December 19, 2001, Complainant received notice from Network Solutions that
Neulevel was developing a new registration process and Verisign informed
Complainant that they would be the first to receive information about the new
process from Neulevel.
After
not having any correspondence with Neulevel for a period of about 80 days,
Complainant contacted Verisign and was told that the process had already begun
and that Complainant may have missed the deadline for registration submission.
On
April 8, 2002, Complainant received notification of an IP claim with Respondent
and was allowed to file a STOP Claim. Complainant eventually reaches the
conclusion that had Neulevel proceeded with the original registration process,
Respondent would not be the acting registrant; instead, it would have been
Solvay, the aforementioned French company.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
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.
Complainant
asserts that it has been operating in the publishing and directory business
under the SOCAL.COM mark since 1994. Although Complainant’s Submission lacks
supporting evidence that would reinforce this assertion, in the absence of contradictory
evidence, the Panel confirms Complainant’s alleged rights in the mark. The
Panel also notes that the issue of rights in the SOCAL.COM mark under STOP
Policy ¶ 4(a)(i) is not determinative in this case, thereby avoiding the
necessity of using a strict standard of review as to Complainant’s rights. See
Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent’s
<socal.biz> domain name is identical to Complainant’s SOCAL.COM
mark. Although Complainant’s mark incorporates the “.COM” addition, previous
Panels have determined that the deviation is insubstantial because the
consuming public will not differentiate between Complainant’s SOCAL.COM mark
and Respondent’s <socal.biz> domain name. “When a trademark, service mark, collective mark or certification mark is
composed, in whole or in part, of a domain name, neither the beginning of the
URL (http://www.) nor the TLD have any source indicating significance. Instead,
those designations are merely devices that every Internet site provider must
use as part of its address.” U.S.
Patent and Trademark Office Examination Guide No. 2-99, “Marks Composed, in
Whole or in Part, of Domain Names,” Section I (Sept. 29, 1999); see
also Defensive Driver Online Ltd. v. Marco Publ’g Corp., FA 112435 (Nat.
Arb. Forum July 9, 2002) (finding Complainant’s DEFENSIVEDRIVING.COM mark is
identical to Respondent’s <defensivedriving.biz> for the purpose of
resolving domain name disputes); see also AJC, Intl. V. None a/k/a Cox
Holdings, FA 109367 (Nat. Arb. Forum June 11, 2002) (finding that, for the
purpose of domain name disputes, Respondent’s service mark in AJC.COM is
equivalent to AJC and thus identical to <ajc.biz>).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been
satisfied.
Complainant’s
Submission fails to sufficiently address Respondent’s lack of rights and
legitimate interests in the domain name. Respondent’s contentions are comprised
of the following statement:
The domain was registered as a convenience of
its customers. The Respondent registered and parked a group of domains in the
event one of their customers might want one of them. They in fact [don’t] have
a need for the domain at the time of registration.
Complainant
does not specifically address STOP Policy ¶¶ 4(c)(i) – (iii) by name, and while
it is in the Panel’s discretion to glean pertinent arguments from the
Complaint, creating an adequate argument from Complainant’s Submission would
stretch the Panel’s discretion too far from its moorings.
Complainant’s
Submission suggests that Respondent’s lack of use signifies its lack of rights
and legitimate interests in the domain name. However, previous Panels have
determined that four months, the approximate amount of time that has transpired
in the present case, is an insufficient amount of time to determine passive
holding of a domain name. See Meredith
Corp. v. City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain
name for eight months is reasonable time to engage in research and
development); see also Mondich and
Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(finding Respondent cannot be said to lack a bona fide intent to use the domain
name when only 10 months have passed since registration); see also Casual Corner Group, Inc. v. Young, FA
95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and
legitimate interests in the domain name even though he has made no use of the
website at the time of the Complaint.
Only after a two-year period of nonuse is there an inference of a lack
of bona fide intent to use the name).
Furthermore,
although Complainant’s allegations typically shift the burden to Respondent,
which usually must demonstrate that it has presented evidence of demonstrable
preparations to use the domain name, Complainant has failed in presenting a prima
facie case; thus, Respondent never faces the task of fulfilling its burden.
Complainant asserts that Respondent registered the domain name “as a
convenience of its customers,” but the implications behind that statement are
dubious. Complainant also states under its STOP Policy ¶ 4(a)(i) analysis that
Respondent is involved in the same business dispensing similar goods and
services, yet that statement is in dissonance with Complainant’s later
assertions that Respondent merely parked the domain name in the event that “one
of her clients wanted one of them.” Either Respondent is using the subject
domain name to compete with Complainant or it is passively holding the
registration, both of which are unclear according to the Complaint.
Whatever
relevance Complainant’s account of its frustration with Neulevel has on its
current position is unclear because had Complainant’s preferred hypothetical
chain of events occurred, it would still be challenging as Complainant for the
subject domain name. The fact that Solvay, a French Company, would be the
acting Respondent instead of Freedom Communications, the current Respondent,
does not seem to alter Complainant’s position in the least. The advantage
Complainant would glean from its preferred circumstances taking place is not
apparent to the Panel, nor were they stated in the Complaint.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(ii) has not been satisfied.
Complainant indicates in its Submission
that, “We do not believe the Respondent is acting in bad faith or malice. They
took advantage of a flawed process therefore resulting in this action.” As part
of Complainant’s prima facie case it is obligated to demonstrate that
the subject domain name was registered or is being used in bad faith. It is
within the Panel’s discretion to scrutinize the materials and arguments in
Complainant’s favor on account of Respondent’s lack of response. However, even
if the Panel determines Complainant’s above statement pertains only to bad
faith use, Complainant still has not made a case sufficient to satisfy a STOP
Policy ¶ 4(a)(iii) standard of bad faith registration. Complainant merely
restates the STOP Policy in its Submission with amended material that asserts,
“They registered the domain for the purpose of future use by one of their
clients or themselves. Not for use today.” However, a business or corporation
proactively attempting to address its customers’ concerns is hardly bad faith
registration, and four months is not a sufficient amount of time to determine
passive holding.
Complainant alleges Respondent was
willing to transfer the domain name in an effort to resolve the dispute
amicably. However, Complainant’s Submission fails to provide any evidence
supporting these bold contentions. In considering the totality of the
circumstances surrounding the present dispute, the Panel finds Complainant’s
arguments lack consistency and supporting evidence. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539
(WIPO Aug. 31, 2000) (declining to transfer the domain name where a full
factual record has not been presented to the Panel such that a conclusive
determination can be made regarding the parties’ respective claims to the
contested domain name); see also Lush LTD v. Lush Environs, FA 96217
(Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a
Response, Complainant must allege facts, which if true, would establish that
Respondent does not have any rights or legitimate interests in the disputed
domain name).
The Panel finds that STOP Policy ¶
4(a)(iii) has not been satisfied.
Because Complainant failed in
establishing all three elements required under the STOP Policy, the Panel
concludes that the requested relief shall be hereby DENIED.
Accordingly, it is Ordered that the <socal.biz>
domain name REMAIN with Respondent.
By failing to submit a Response,
Respondent has not established rights or legitimate interests in the domain
name. Because there are remaining IP Claimants for the subject domain name,
subsequent challenges under the STOP Policy SHALL be permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 21, 2002
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