Dice Inc. v. Dice Multimedia Europe B.V.
Claim Number: FA0205000114360
PARTIES
Complainant
is Dice Inc., New York, NY, USA
(“Complainant”) represented by Brian
Campbell. Respondent is Dice Multimedia Europe B.V.,
Amsterdam, NETHERLANDS (“Respondent”) represented by Dick Elberse.
The
domain name at issue is <dice.biz>,
registered with Ascio Technologies Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Estella
S. Gold 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 May 20, 2002; the Forum
received a hard copy of the Complaint on June 27, 2002.
On
July 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 23,
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 July 23, 2002.
On August 3, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Estella S. Gold as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
alleges that DICE is a registered trademark of its wholly owned subsidiary, Dice,
Inc. Complainant also alleges that it
has been commonly known by the Dice name, and that Respondent’s use of the
domain name <dice.biz> lacks a
connection with a bona fide offering of goods and services. Complainant argues that the Respondent has
registered the domain name <dice.biz>
in order to prevent the Complainant from doing so.
B.
Respondent
Respondent
acknowledges that <dice.biz> is
identical to the United States Trademark Registration of the Complainant. Respondent contends that it has a legitimate
interest in the domain name <dice.biz>
through the use of the trade name Dice Multimedia Europe B.V. as well as
Respondent’s use of the trademark and service mark, DICE, in connection with
bona fide offering of goods and services on the web site <dice.nl>.
Respondent is in the business of distribution, production, licensing and sale
of multimedia products, a non-competing entity with Complainant.
The following facts are undisputed:
(1) Complainant has a United States
registered trademark “Dice”;
(2) Respondent admits that the registration
of <dice.biz> is identical to
Complainant’s mark;
(3) Complainant actively uses the mark “Dice”
in commerce, including, but not limited to, its domain name <Dice.com>
through affiliates;
(4) Complainant has used the “Dice” name
since 1990;
(5) Respondent shows use of the Dice name in
combination with other words (such as “Dice Computer Games,” “Dice Video,” and
“Dice-DVD” in commerce since 1996; and
(6) The only use of “Dice” alone is the
domain name owned by the Respondent of <dice.nl>, in use since 1996.
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 well established rights in the mark through its registered trademark
“Dice,” as well as its usage of the mark in the United States. Therefore, the issue to be resolved is
whether or not Respondent has rights or legitimate interests in the disputed
domain name <dice.biz>.
A
Respondent may demonstrate its rights or interests in a domain name by proving
that it (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)(iii).
The
Respondent may demonstrate its rights or interests by proving before any notice
to the Respondent of the dispute, its use of, or demonstrable preparations to
use, a name corresponding to the domain name in connection with a bona fide
offering of goods or services.
Although Respondent has shown no
registration of the trademark “Dice” standing alone, Respondent does show
continuous use of the mark “Dice” alone, in commerce, through its use of the
domain name <dice.nl>.
Although
Respondents may not have made actual use of a registered “.biz” name prior to
the filing of a STOP Complaint, Panels have found that, where the Respondent
operated a website at a virtually identical domain name, such use may fulfill
the “use of, or demonstrable preparations to use” test of STOP Policy ¶
4(c)(ii). See Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954
(Nat. Arb. Forum Feb. 24, 2002) (finding that, where the Respondent
continuously operated a website at <americanway.com> for over five years
in connection with the sale of its video series “The American Way of Training
Hunters & Jumpers,” such activity satisfied the requirements of STOP Policy
¶ 4(c)(ii) in regard to the identical domain name <americanway.biz>).
Since Respondent has a legitimate interest in the mark, the Panel
therefore shall dismiss this Complaint, and the subsequent challenges to the
domain name <dice.biz>, as
against the Respondent, under STOP Policy shall not be permitted.
DECISION
For the reasons set forth above, the
Complaint is dismissed, and subsequent challenges to the domain name <dice.biz>, as against
Respondent, shall not be permitted against this domain name.
Estella S. Gold, Panelist
Dated: August 15, 2002
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