Pioneer v. dotpartners LLC
Claim Number: FA0204000112479
PARTIES
Complainant
is Pioneer, Long Beach, CA
(“Complainant”) represented by Robert J.
Skousen, of Skousen & Skousen. Respondent is dotpartners LLC, Livingston, NJ (“Respondent”) represented by Ari Goldberger, of ESQwire Law Firm.
The
domain name at issue is <premier.biz>,
registered with TLDS Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no conflict in serving as Panelist in this
proceeding.
Panelist
is Judge Karl V. Fink (Ret.)
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 2, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 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”).
On May 29, 2002 Respondent requested that the deadline
to file its Response be extended. The
Forum granted Respondent’s extension request on May 29, extending the Response
deadline to June 18, 2002.
A
timely Response was received and determined to be complete on June 17, 2002.
A
timely Additional Submission was received from Complainant on June 21,
2002. Respondent also submitted a
timely Additional Submission on June 25, 2002.
The Panel considered all submissions. On July 25, 2002, pursuant to STOP Rule
6(b), the Forum appointed Judge Karl V. Fink, (Ret.) as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant is the owner of United States Trademark Number
1,697,381 for the mark PREMIER in International Class 009 for the following
goods and services: Combination stereo radio tuner, audio cassette player with
multi-compact disc controller (with or without built-in amplifier). Pioneer registered the PREMIER mark on the
Principal Register of the United States Patent and Trademark office on June 30,
1992.
Complainant’s
registered trademark is identical to Respondent’s registration of <premier.biz>
because, with the exception of “.biz” the wording and lettering of
Respondent’s PREMIER and
Complainant’s registered PREMIER
are the same.
Complainant
was also recently granted registration of the <premier.info> domain name and is currently taking the
necessary steps to trademark the use of that name.
Respondent
has no legitimate interests in the domain name that is the subject of this
Complaint because the Respondent is not the owner or beneficiary of a trade or
service mark that is identical to the <premier.biz> domain
name. An online trademark search of
<uspto.gov> shows no pending or registered trademarks for use of the PREMIER mark by Respondent.
Respondent
is not currently using the mark in commerce with any bona fide offering of
goods or services. Respondent is not
currently using <premier.biz> or a similar domain name in connection
with a bona fide offering of goods and services. Respondent is not commonly known by use of the PREMIER mark.
Complainant’s
PREMIER trademark has been registered since 1992 and has been in use in
commerce by Complainant since 1989.
Respondent either knew or should have known by use of ordinary care of
Complainant’s registration and extensive world-wide use of the PREMIER
trademark prior to Respondent’s registration of <premier.biz>. Respondent’s resulting registration of <premier.biz>
was, therefore, completed in a bad faith attempt to prevent Pioneer from
reflecting its registered trademark in a corresponding domain name and for the
primary purpose of disrupting Complainant’s bona fide attempts to do business
on the Internet.
B.
Respondent
There is no
basis for transferring the disputed domain name <premier.biz> to
Complainant. The Complaint is
completely lacking of any evidence that Respondent lacks a legitimate interest in
the Disputed Domain or that it registered the Disputed Domain in bad
faith. The Disputed Domain incorporates
the common word “premier”, and Respondent, a developer of web sites, uses it
for a web site about movies
with a search engine, links, information, news, advertisements, and products
related to movies and entertainment.
Respondent has already developed a Premier web site, which is currently hosted
at <movies.lv>. Accordingly,
Respondent clearly has a legitimate interest in the Disputed Domain. Moreover, premier is a very common word with
substantial third party use and Complainant does not, and cannot, have
exclusive rights to it.
There is no
evidence of bad faith registration or use.
Respondent had not heard of Complainant when the mark was registered,
and mere constructive knowledge of a mark containing such a common word cannot
create a presumption of bad faith.
Respondent is a web site development
company that, together with its affiliated company, Boogie TV LLC (“Boogie
TV”), operates a proprietary Internet web site directory and search engine
under the brand name iBoogie™, powered by its own proprietary iBot search
technology, for which it has applied for a United States patent.
Respondent intends to use the Disputed
Domain for its “Premier” web site, a web site about movies with a search
engine, links, information, news, advertisements, and products related to
movies and entertainment. The web site
is currently hosted at <movies.lv>, and will be hosted at the URL <premier.biz>, once this matter is resolved and the
registry hold is removed from the domain name.
“Premier” is a common word meaning “the
first to occur,” as is in something that is “performed for the first time.”
“Premier” is a synonym for “premiere,” which specifically refers to the first
public performance of a movie or play. The
common word “premier” is subject to substantial third party use unaffiliated
with Complainant.
Complainant has presented no evidence to
support its claim that the Disputed Domain was registered in bad faith. Complainant makes the frivolous argument
that Respondent’s unrelated trademark applications create a “strong likelihood
of confusion” with Complainant’s sale of electronic products. Respondent is using the Disputed Domain in
good faith for a site about movies and entertainment.
Respondent clearly has a
legitimate interest in the Disputed Domain pursuant to paragraph
4(c)(iii). Respondent operates <Boogie.tv> and
<iBoogie.com>, a search engine and web site network in which it has invested
$1.7 million. Respondent will use the
Disputed Domain for a web site about movies with a search engine, links,
information, news, advertisements, and products related to movies and
entertainment. The web site has been
developed and is currently hosted at the URL <movie.lv> because the <premier.biz> URL is on hold due
to this dispute.
Respondent
has rights and a legitimate interest in the Disputed Domain because of its
demonstrable preparations to use the Disputed Domain in connection with the bona
fide offering of goods and services, namely a movie and entertainment web site
in conjunction with its <Boogie.tv> web site network.
Complainant proffers no evidence to support this
allegation of bad faith, essentially asking the Panel to presume bad faith
because of the alleged fame of its mark.
However, bad faith cannot be presumed under the STOP Policy when the
disputed domain name incorporates a common word.
Complainant has failed to present any
evidence to support bad faith registration or use on the part of Respondent –
and because the credible evidence demonstrates that the Disputed Domain was
registered in good faith – the Complaint must be denied.
This is a case
of Reverse Domain Name Hijacking and the Panel should declare in its
decision that the Complaint was brought in bad faith and constitutes an abuse
of the administrative proceeding.
C.
Additional Submissions
Respondent
is infringing upon Pioneer’s right to and use of the <premier.biz>
domain name by offering many links to Pioneer and Pioneer Premier products
under a web site entitled “Premier” and hosted at <movie.lv>.
Respondent
misrepresented to this body that prior to the filing of Pioneer’s Complaint, it
had no knowledge of Pioneer’s intellectual property rights in and to the
Premier mark.
Pioneer
has been unable to find evidence of any dotPartners’ presence on the Internet
that uses the Premier mark in a legitimate manner.
On
May 24, 2002, Respondent’s counsel informed counsel for Pioneer, Robert James
Skousen, that dotPartners was interested in selling the <premier.biz> domain name to Pioneer for $10,000.00.
Pioneer
complied with NeuLevel’s Intellectual Property (IP) Claim procedure by
submitting a claim for trademark rights in and to the <premier.biz>
domain name prior to the August 8, 2001 deadline. Concurrently therewith, Pioneer also submitted an application for
registration of the <premier.biz> domain
name. Under the “New Round-Robin
Process” established by NeuLevel, Inc. for the registration of domain names
when multiple parties submitted applications, Respondent was apparently
selected as the registrant even though Pioneer had the superior intellectual
property right to the domain name.
According
to Step 3 of NeuLevel’s Round Robin Process, Respondent was notified of
Pioneer’s IP Claim against <premier.biz>. Thus, prior to March 11, 2002, Respondent
received notice from NeuLevel that Pioneer had submitted an IP Claim against
the <premier.biz> domain name.
STOP
requires only that the Complainant prove bad faith in the registration of the
domain name with no requirement for bad faith use of the domain name. Respondent cannot establish that it has any
rights under 4(c)(i) as it is not the owner or beneficiary of a trade or service
mark identical to the <premier.biz> domain
name. Respondent has yet to seek
trademark or service mark protection for either the <premier.biz>
domain name or any use associated with the Premier mark.
The
specific nature of the STOP process required that Respondent specifically
ratify its intent to register the web site after it was notified of Pioneer’s
trademark rights in and to the <premier.biz> domain
name. Respondent has no web site that
is denominated as “Premier” site in connection with the sale of products
related to movie premiers, as Respondent claims. There is no evidence that Respondent has taken any real steps to
create a legitimate business to be used in connection with the <premier.biz>
domain name.
Respondent,
aside from unsupported assertions, has failed to provide sufficient proof of
its alleged business venture.
Respondent
has not presented any evidence that it is commonly known by the domain name
Premier.
On May 24, 2002, Respondent’s counsel
called counsel for Complainant after receiving an email from him on May 20,
2002 stating that he and his client were “interested in hearing any offers of
settlement.” He advised that, while he
would not ask my client to make an offer, he would recommend that his client
accept $10,000 if offered that amount.
It
is unreasonable that a company apparently so committed to developing its use of
the <premier.biz> URL would immediately offer the domain
name for sale if Respondent were truly intent upon hosting a web site.
Respondent
is operating much more than a search for movies. Rather, many of the links that can be found at Respondent’s web
site will link a user to a web site offering Pioneer Premier products for sale. There is no question that likelihood of
confusion is great. Pioneer is a giant
in the electronics and entertainment business.
Respondent, by its own admission, is allegedly seeking to break in to
the entertainment industry by introducing its <movie.lv> web site.
Respondent’s Additional Submission
Respondent submitted affidavits stating:
DotPartners, LLC is a web site
development company that, together with its affiliated company, Boogie TV LLC
(“Boogie TV”), operates a proprietary Internet web site directory and search
engine under the brand name iBoogie™.
Our main web site is located at Boogie tv, which provides advertisements
and links to web sites across a wide range of entertainment categories
including: movies, television, music, radio, sports and games. We have invested $1.7 million to develop our
business. We intend to use premier.biz
for our “Premier” web site, a web site about movies with a search engine,
links, information, news, advertisements, and products related to movies and
entertainment. The web site is
currently hosted at movies.lv, and will be hosted at the URL premier.biz, once
this matter is resolved and the registry hold is removed from the domain
name.
For the reasons set forth below, the
Panel finds Complainant has proven the necessary elements to have the domain
name transferred.
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.
Complainant
is the owner of a U.S. trademark for the mark “Premier” and continues to use
the mark in commerce. The disputed
domain name is identical to that mark in which the Complainant has rights.
Respondent
does not dispute this claim.
Complainant
has proven this element.
In
order to show rights or legitimate interests in a disputed domain name, the
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. America
Online, Inc. v. Prince, FA 110800 (Nat. Arb. Forum, June 6, 2002). Respondent has not offered such evidence.
There is no evidence Respondent or any
business affiliated with Respondent is commonly known as premier or <premier.biz>. The Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name pursuant to STOP
Policy ¶ 4(c)(iii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark).
Complainant has proven this
element. Respondent has no rights or
legitimate interest in the domain name.
Respondent was on notice of Complainant’s
rights in <premier.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 Valspar Sourcing, Inc. v.
TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002).
See also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith
includes actual or constructive knowledge of commonly known mark at the time of
registration).
Complainant has proven this element.
DECISION
Complainant has
proven each of the required elements.
Therefore, it is ordered that the domain name <premier.biz>,
be transferred to Complainant.
Subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
Judge Karl V. Fink (Ret.)
Dated: August 12, 2002
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