Leap Wireless International Inc. v.
Mantis Business Solutions Inc.
Claim Number: FA0204000112467
PARTIES
Complainant
is Leap Wireless International Inc.,
San Diego, CA (“Complainant”) represented by Mark T. Lee, Senior Legal Counsel of Cricket Communications Inc..
Respondent is Mantis Business
Solutions Inc., Washington, DC (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
The
domain name at issue is <cricket.biz>,
registered with Onlinenic, Inc. d/b/a China-Channel.com.
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.
Hugues G. Richard
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 3, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 30,
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 30, 2002.
Complainant’s
Additional Submission was received and determined to be complete on June 4,
2002. Respondent’s Additional Submission was received and determined to be
complete on June 10, 2002.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hugues G. Richard
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant contends it owns trademark registrations for
the CRICKET trademark. The domain name in dispute is identical to Complainant's
registered trademarks in that it incorporates Complainant's CRICKET trademark.
The addition of the generic top level domain designation ".biz" does
not distinguish the domain name in dispute from Complainant's registered
trademark.
No Rights or
Legitimate interest
Complainant contends it has devoted years of substantial
effort and spent significant sums of money to develop and promote its CRICKET
mark. It states it has developed substantial brand recognition for its mark
including substantial goodwill among the consumers of its services and
therefore its mark has become distinctive and famous.
Complainant says it has established its trademark rights
in the CRICKET mark as early as March 1999 and that Respondent registered the
domain name in dispute on March 27, 2002.
Complainant alleges that Respondent does not own and is
not the beneficiary of a trade or service mark that is identical to the domain
name in dispute in connection with a bona fide offering of goods or services.
It claims it does not appear that Respondent has been commonly known by the
domain name in dispute.
Registration in Bad
Faith
Complainant contends that Respondent did not have a good
faith basis for registering the domain name at issue. It claims Respondent
registered the domain name in dispute to prevent Complainant from reflecting
the mark in a ".biz" domain name and/or to otherwise disrupt
Complainant's business.
B.
Respondent
Respondent
contends that this issue is never in dispute in a STOP proceeding and is not in
dispute here.
Respondent
contends that despite Complainant's allegation that Respondent has no trademark
or trademark application for CRICKET, it fails to satisfy its burden of proving
the lack of a legitimate interest.
Respondent
alleges that it registered the disputed domain name for the purpose of
developing a website related to cricket tournaments as part of its iTournament
network. Presently, the preliminary design for the iTournament cricket site is
hosted at the URL <crickettournament.com> this is the reason why it
hasn't yet used the domain name. It contends that the intent to use a
descriptive domain name for a related website constitutes use in connection
with a bona fide offering of goods and services.
Respondent
claims its burden is very small; all it needs is a "plausible explanation".
It asserts that it has engaged in substantial efforts to launch its iTournament
network and its cricket component.
Respondent
adds that CRICKET is a common word that refers to a specific outdoor game. This
word is subject to substantial third party use. There are over 1.1 million
third-party web pages containing the term CRICKET and over 2000 third-party
Internet domain names containing the word CRICKET. It claims that the
registration of a domain name incorporating merely a common word to use for a
business establishes its legitimate interest.
Respondent
states that Complainant does not have exclusive rights in the common word
CRICKET.
Respondent
contends that there is no evidence that it registered the disputed domain name
with the intent to sell it to Complainant, to disrupt its business, to prevent
it from registering its trademark, or to confuse consumers.
Respondent
claims that it does not need the permission of Complainant to use the common
word CRICKET. Respondent alleges that under the UDRP Policy, where a trademark
is a common term, bad faith can only be proven if there is evidence that
Respondent registered the domain name "specifically to sell to the
Complainant", or that the "value of the domain derived exclusively
from the fame of [the] trademark". It supports that there is no evidence
of such intent on its part or fame of Complainant's mark.
Respondent
also contends that the fact that there are many users of the word CRICKET
demonstrates that the term can be used by others in good faith.
Respondents
claims to have never heard of Complainant or its mark prior to this Complaint
and there is no evidence contrary to that.
Respondent
submits that this is a case of Reverse Domain Name Hijacking because Respondent
has a legitimate interest in the disputed domain and Complainant has put forth
no evidence to support bad faith on the part of Respondent and Complainant has
no exclusive rights in a common word such as CRICKET.
C.
Additional Submissions
Complainant
alleges that the fact that Respondent supposedly intends to start an online
network for games of skill does not allow Respondent to incorporate
Complainant's federally protected trademark into a domain name that is designed
"to help generate Internet traffic" for Respondent's tournament site.
Moreover,
Complainant alleges Respondent is of bad faith because it admits that it
intends to use the domain name at issue to "generate internet
traffic" for its other websites. Complainant explains that the reason for
commencing this proceeding is because of the way Respondent intends to use the
domain name in dispute.
Complainant
states that Respondent has never been known by the term CRICKET and has never
used the term CRICKET in commerce, so Respondent has no legitimate rights in or
to the CRICKET mark.
Complainant
asserts that it is not disputed that it owns federally-protected trademark
rights to the CRICKET mark and has used such trademark extensively in commerce.
It is not because the word CRICKET can have several meanings that Respondent
was free to misappropriate Complainant's CRICKET trade mark. It says its
trademark is a suggestive trademark because there is nothing about the term
CRICKET that explicitly describes the goods and services that Complainant
offers using the CRICKET mark. Being suggestive, it claims the CRICKET mark
enjoys strong trademark protection. Additionally, it states there is no
evidence that Respondent had used the term CRICKET in any way prior to
registering the domain name in dispute. Also, it states there is no evidence
that Respondent's business had ever been known by reference to the word CRICKET
or the term <cricket.biz>.
Therefore, Complainant concludes Respondent does not have any legitimate rights
in CRICKET or <cricket.biz>.
In regards to Respondent's argument that it did not act
in bad faith in registering the domain name in dispute because cricket
supposedly will be one of the sports that will be part of the network of sites
that Respondent supposedly is in the process of developing, Complainant alleges
that this argument fails because thinking or preparing to use the domain name
in dispute does not negate a finding of bad faith.
In
addition, Complainant contends that the Notice provided to Respondent under the
STOP Policy that Complainant has filed an IP Claim for the CRICKET mark
precludes any possibility of registration in good faith of the domain name in
dispute.
Finally,
Complainant contends that Respondent's objective of generating traffic for
iTournament will place Respondent in direct competition with Complainant for
Internet traffic generated using the term CRICKET. This might permit Respondent
to take advantage of the goodwill and recognition that Complainant has
developed for the CRICKET mark. Complainant states that this is an example of
bad faith.
Respondent
contends that Complainant's additional submission adds nothing to its initial
Complaint. Respondent claims that Complainant is still without evidence of bad
faith registration or use, or evidence that Respondent had knowledge of its
trademark CRICKET when it registered the domain name <cricket.biz>.
Respondent
restates that there are over 1.1 million third party uses of CRICKET on
Google.com and many pending third-party trademark registrations incorporating
that word.
Moreover,
Respondent makes clear that it does not only consider using the domain in
dispute. It has produced a complete business plan for an online tournament
business, which includes a website about the sport of cricket. A website at
<crickettournament.com> has already been setup. Respondent states that
all that is required to prove a legitimate interest under the STOP Policy is
"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". It claims that the business plan was in place long before the
arisen of the dispute. It says it has registered dozens of sports and game
related domains for its business.
Respondent contends that there is no reason to draw the
conclusion that registration of the disputed domain name was in bad faith
because Respondent and Complainant are not competitors.
Also
in relation to bad faith, Respondent insists that there was no bad faith simply
because it proceeded to register the disputed domain name despite Complainant's
existing IP claim. It bases itself in a case cited by Complainant that
specified that "each case should be considered on all of the facts and
circumstances". It says that in the circumstances of this case, the only
conclusion to be reached is that Respondent registered a common word for a
sport to use for the bona fide operation of a sports website in good faith.
Finally,
Respondent alleges that registering sport-related domain names to drive traffic
to its website does not establish bad faith unless there is evidence of intent
to confuse users and benefit from traffic intended for Complainant. This cannot
be presumed where the domain name incorporates a common word like CRICKET.
A routine verification by
the Panel of the Trademarks Electronic Search Systems (TESS) of the United
States Patent and Trademark Office has revealed that the three CRICKET
trademarks, registration # 2359369, # 2359370 and # 2363821, on which the
Complainant bases its Complaint are not registered in its name but in the name
of Cricket Communications Inc. This is a fact which was not raised by either
party, we will therefore not take it into consideration for the purpose of
deciding the present Complaint.
Having reviewed the evidence submitted by
Respondent (none was submitted by Complainant) and after having reviewed the
written representations of the parties, the Panel makes the following findings:
Complainant
does have rights in the mark CRICKET for the wares and services it deals in or
with. Complainant has used the CRICKET trademark in association with wireless
communication apparatus, with retail store services featuring wireless
communication apparatus and with telecommunication services. However,
Complainant has failed to show that its reputation extended beyond these
services and products. Complainant has not submitted any evidence supporting
the finding that its trademark CRICKET is a famous trademark. There is no
evidence of the effort it has devoted
to promote and develop its CRICKET mark. CRICKET is a common word and
Complainant cannot have a monopoly over this word.
The evidence submitted by Respondent
(exhibits 1, 2, 3, 4, 5, 6, 7, 8 and 9) supports the finding that Respondent
has rights and legitimate interests in the mark CRICKET since this word is a
common word that represents, amongst other things, a well known sport and that
is widely used by a variety of people in different contexts (exhibits 6, 7, 8
and 9).
The Panel also finds that Respondent's
evidence supports its allegation that it has registered over 200 common word
domain names, under either Mantis Business Solutions inc. or iTournament LLC,
incorporating various sports and games of skill to help generate Internet
traffic from users interested in the various activities (exhibit 5). Also, the
evidence shows that Respondent has demonstrated serious preparations to use the
term CRICKET in relation to a bona fide offering of services because of its
engagement in substantial efforts to launch its iTournament network and its
cricket component (exhibits 2, 3 and 4)
The Panel finds that Respondent did not
register the disputed domain name in bad faith to sell to Complainant or to any
party, to prevent Complainant from reflecting its mark in a corresponding
domain name nor to disrupt Complainant's business or to confuse consumers
(exhibit 1).
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.
On this first issue, the Panel finds that Complainant
does have rights in the mark CRICKET which is identical to the disputed domain
name, given that Respondent has not disputed this allegation of fact of the
Complainant. Noteworthy though that the Complainant has failed to show that its
exclusivity for the mark should naturally extend beyond the wares and services
for which it is registered, particularly given the fact that the word CRICKET
is also a sport and an insect. It
is a word that is used and will continue being used over and over again by many
individuals or entities in different contexts. Complainant cannot claim the
monopoly of such a common term, especially in the absence of evidence that the
trademark has become famous.
The Panel can rely on any of the
following circumstances, without limitation, to find that Respondent has rights
or legitimate interests in the domain name :
(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 Respondent of the dispute, Respondent's 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 if it has acquired no trademark or service mark rights.
(STOP Policy ¶ 4(c)(i) -
(iii).)
The Panel refers to the decision in Woodworker's
Supply Inc. v. Roloff Marketing Inc,[1]
where it was decided that ownership of a trademark by a respondent is not a
prerequisite for having rights or a legitimate interest in or to the domain
name. As the Panel stated: "Complainant [] has failed to present any
authority to the effect that Respondent must actually own trademark rights in
and to the domain name in question in order to have `rights or legitimate
interests`, as required by STOP Policy 4(a)(ii)." Moreover, Respondent has
demonstrated preparations to use the domain name in connection with a bona fide
offering of services. It is clear that Respondent has engaged in substantial
efforts to launch its iTournament network and its cricket component (exhibit
2).
Although panels have held that
registration of an infringing domain name in order to opportunistically trade
on the goodwill of the Complainant's mark does not constitute a bona fide
offering of goods and services, nothing shows in the case at hand of such
intention of Respondent. Both parties offer services and goods that are
different and it is not likely that users will conclude to an affiliation
between Complainant and Respondent's website.
Based on the precedents and on the above
findings, the Panel is of the view that the Complainant has not discharged its
burden of proving that Respondent has no right or legitimate interest in the
disputed domain name and Respondent has satisfied the Panel that it has rights
or legitimate interests in the disputed domain name.
This element does not need to be examined given the fact that Complainant has failed to fulfill its burden of proof under the previous title.
DECISION
For the foregoing reasons, the Panel
concludes that :
-
The domain name
registered by the Respondent is identical
to the trademark to which the Complainant has rights although not exclusive ones; but
-
The Respondent has rights or legitimate interest in
respect of the domain name;
The Panel does not find that the
Complaint was brought in an attempt at Reverse Domain Name Hijacking.
The Complainant has failed to meet its
burden on at least one of the three elements, which need to be proven cumulatively under the STOP Policy;
accordingly, the Panel dismisses the
Complaint. Subsequent challenges to this domain name, as against the
Respondent, under the STOP Policy shall
not be permitted against this domain name.
Hugues G. Richard, Panelist
Dated: June 27, 2002
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