omnium communications limited v. Kivilcim
Istanbulluoglu
Claim Number: FA0204000112566
PARTIES
Complainant
is omnium communications limited,
London, UK (“Complainant”) represented by John
D Perceval. Respondent is Kivilcim Istanbulluoglu, Samanpazari,
TURKEY (“Respondent”).
The
domain name at issue is <find.biz>,
registered with BB Online UK Limited.
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 29, 2002; the Forum
received a hard copy of the Complaint on May 21, 2002.
On
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 17,
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 17, 2002.
On July 15, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant,
Omnium Communications Ltd., contends that FIND has been its trade name since
October 1996 and the <find.co.uk> website is its sole business. Complainant contends that any applicant for
the domain name “probably” intends to sell the name or holds the name to
prevent Complainant from using the name.
B.
Respondent
Respondent,
Kivilcim Istanbulluoglu, contends that
Complainant’s web address <find.co.uk> is not identical to <find.biz>. Respondent contends that FIND is a generic
word in which Complainant cannot have any protectable rights.
Respondent owns Interaktif Ltd.,
<interaktif.com>, an IT company in Turkey. He registered <find.biz> to develop a business
search engine. Respondent claims that
there are 50,311 registered domain names containing the word “find” and that
there are 89,700,000 results for “find” at Google.com.
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
has failed to establish that it has rights to the FIND mark through trademark
registration or common law.
The
Panel finds that STOP Policy ¶ 4(a)(i) has not been satisfied.
A
Respondent may demonstrate its rights or interests in a STOP proceeding by
proving that it is the owner or beneficiary of a trademark or service mark that
is identical to the disputed domain name.
See High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum Mar.
6, 2002) (noting that, although the result might have been different had the
Complainant’s case been brought under the UDRP, the Respondent’s trademarks in
THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its rights and
interests under STOP Policy ¶ 4(a)(ii) in the <thrashermagazine.biz>
domain name). Respondent has offered no
evidence that he owns a trademark or service mark for FIND.
A
Respondent in a STOP proceeding may demonstrate its rights or 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). Respondent has failed to submit any evidence
showing preparations to use the domain name.
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).
Finally,
a Respondent may demonstrate its rights or interests in a domain name by
proving that it has been commonly known by the domain name, even if it has
acquired no trademark or service mark rights.
STOP Policy ¶ 4(c)(iii). Respondent
has failed to submit any evidence that he is known by the domain name.
The Panel finds that Respondent does not
have a protectable interest in the domain name and that STOP Policy ¶ 4(a)(ii)
has been satisfied.
Complainant offers no evidence of
Respondent’s bad faith; therefore the Panel finds that STOP Policy ¶ 4(a)(iii)
has not been satisfied.
Having
failed to establish two of the three elements required under the Start-up
Trademark Opposition Policy, the Panel concludes that relief shall be hereby denied
and the Complaint is dismissed.
Subsequent challenges under the STOP Policy against the domain name <find.biz>
shall be permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 23, 2002
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