Travel.biz International Pty Ltd v.
Blacker Media
Claim Number: FA0205000114418
Complainant
is Travel.biz International Pty Ltd,
Greenwich, AUSTRALIA (“Complainant”) represented by David M Upton. Respondent
is Blacker Media, Los Angeles, CA,
USA (“Respondent”) represented by Ari Goldberger,
of ESQwire.com Law Firm.
The
domain name at issue is <travel.biz>,
registered with Signature Domains.
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.
David A. Einhorn 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 25, 2002; the Forum
received a hard copy of the Complaint on June 1, 2002.
On June
28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
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 18, 2002.
On July
31, 2002, pursuant to STOP Rule 6(b), the Forum appointed David A. Einhorn as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
[a.] The company Travel.biz International Pty
Ltd is a registered company under the corporations law of New South Wales,
Australia. As such:
The domain
name <travel.biz> is identical to the trading name of this
registered company;
The company was registered with the intent of functioning as a travel agency in
an online e-commerce environment;
The association between the Business Names Travel.biz International Pty Ltd and
the domain name <travel.biz> is an essential component of the
marketing and advertising strategy of this company; and
Internet users will associate the domain name <travel.biz> with
this company name.
[b.] The Respondent should be considered as
having no legitimate interests in the domain name <travel.biz> as
the Respondent, as part of the .biz name allocation process, has registered the
following highly desirable domains across a wide spectrum of vastly different
business areas:
<Cars.biz>
<Attorney.biz>
<Finance.biz>
<Gambling.biz>
<Games.biz>
<Insurance.biz>
<Law.biz>
<RealEstate.biz>
<Travel.biz>
[c.] Based on the list of domains registered
by Blacker Media, it appears that the domain <travel.biz> has been
registered in bad faith, and that the Respondent is in the business of
speculative domain registration, for the purposes of selling, renting or
otherwise transferring the domain name registration to the Complainant or to a
competitor of the Complainant, for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain
name.
B.
Respondent
[a.] Complainant does not have a trademark
that is identical to the disputed domain.
Complainant has merely presented evidence of a trade name. A trade name does not provide enforceable
rights under the STOP Policy, nor has Complainant presented any evidence of
common law rights.
[b.] Complainant has provided no evidence to
support its contention that Respondent lacks legitimate interests in the
disputed domain. Respondent has a
legitimate interest in the disputed domain because <travel.biz>
incorporates the common word “travel,” and Respondent is seeking to register it
for a website that provides travel resources.
Furthermore, Respondent is using the term for a related website at its
Consumer Network Website located at <consumernetwork.biz>. A preliminary site is published at
http://209.123.16.16.
[c.] There is no evidence of bad faith
registration or use. Complainant has
not provided any evidence that the disputed domain was registered to sell it to
Complainant, to disrupt Complainant’s business, to prevent it from reflecting
its mark in a domain name, or to confuse consumers. Plaintiff’s allegation that Respondent has registered nine (9)
other .BIZ domain names is not an indication of bad faith. Each of these domain names incorporate
common terms. Furthermore, preliminary
websites for each of these domain names have been developed for and are linked
from Respondent’s <consumernetwork.biz> website.
[d.] Complainant has engaged in Reverse Domain
Name Highjacking. Complainant has
instituted this proceeding involving a generic term on the basis of a trade name which it has not even
used and which is not identical to the disputed domain.
Complainant
has not established trademark rights in the generic term TRAVEL.
STOP
proceedings are concerned with the assertion of rights based on trademarks and
service marks, not on trade names.
Respondent
has not established that it has rights or other legitimate interests in the
term TRAVEL.
Complainant
has engaged in Reserve Domain Name Hijacking.
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 should
properly involve 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 rights based on a trade name only.
STOP proceedings are concerned with the assertion of rights based on
trademarks and service marks, not based on trade names. See AMR Corp. v. Hiran, Costa Verges FA 112519 (Nat. Arb. Forum, July
11, 2002); see also MaCS GmbH v.
Macfarlanes, FA 112448 (Nat. Arb. Forum, July 3, 2002).
Accordingly,
Paragraph 4(a)(1) of the STOP Policy has not been satisfied by Complainant.
Paragraph
4(c) of the STOP Policy addresses three circumstances which can demonstrate a
registrant’s rights or legitimate interest in a Disputed Domain Name:
(i) The
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 the Respondent of the dispute, its 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) The Respondent (as an individual, business or other organization) has
been commonly known by the domain name, even though it has acquired no
trademark or service mark rights.
Respondent
has not established rights in the term TRAVEL.
Respondent has alleged that it has made demonstrable preparation to use
the domain name through its use of the preliminary website http://209.123.16.16
and through its website consumernetwork.biz.
However, Respondent does not allege that those usages occurred before
notice to it of this STOP dispute. Such
is a required element under Paragraph 4(c)(ii) of the STOP Policy.
Accordingly,
Paragraph 4(a)(2) of the STOP Policy has not been satisfied by Complainant.
In
accordance with STOP Rule 1(c), Reverse Domain Name Hijacking means using the
Policy in bad faith to attempt to deprive a registered domain name holder of a
domain name.
The
Panel notes that Complainant did not demonstrate trademark or service mark
rights in the disputed domain name.
Incorporation of a business under a name consisting of a generic term
followed by .BIZ is not a legitimate method of obtaining rights for use in
depriving another party of a domain name.
Based on
this, the Panel hereby issues a finding that the Complainant has attempted
Reverse Domain Name Hijacking.
The
Complaint of Travel.biz International Pty Ltd. with respect to the domain name <travel.biz> is hereby dismissed. Accordingly, this Panel orders that the domain name at issue not
be transferred from the Respondent to the Complainant.
As
Respondent has not shown that it has any rights or legitimate interests in the <travel.biz> domain name,
subsequent challenges under the STOP Policy against this domain name shall be permitted.
David A. Einhorn, Panelist
Dated: August 14, 2002
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