START-UP TRADEMARK OPPOSITION POLICY

DECISION

Buckeye International, Inc. v. Magnetic Planet Media

Claim Number: FA0204000110846

PARTIES

Complainant is Buckeye International Inc., Maryland Heights, MO (“Complainant”).  Respondent is Magnetic Planet Media, Gambier, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <buckeye.biz>, registered with Dotster, Inc.

PANEL

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.

Alan L. Limbury Esq. as Panelist.

PROCEDURAL HISTORY

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 25, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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 22, 2002.

Complainant’s Additional Submission was received and determined by the Forum to be complete on May 24, 2002.

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury Esq. as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has United States and Canadian registrations in International Class 3 for the trademark BUCKEYE as a word mark and as a design mark. It and its predecessors have used the BUCKEYE mark in connection with various cleaning products since 1905.  The disputed domain name is identical to Complainant’s BUCKEYE trademark. Respondent has no rights or legitimate interests in the disputed domain name, which was registered in bad faith. In a telephone conversation shortly after registration, Respondent indicated a willingness to sell the disputed domain name to Complainant for $7,000.

B. Respondent

Respondent admits the disputed domain name is identical to Complainant’s U.S. and Canadian registered trademarks but denies that the limited protection afforded to a trademark in the chemical cleaning area entitles Complainant to the disputed domain name. Although notified of Complainant’s IP Claim, Respondent proceeded with its application to register the disputed domain name because it had a legitimate interest in securing that domain name for potential business development.

The word “buckeye” is in generic and widespread use. A Yellow Pages search reveals nearly 2500 companies using that word in association with their business or trade name in Ohio alone. There are over 100 U.S. trademark registrations. In 1936 the name Buckeye was found to have lost any distinctiveness it may once have had: Burger Brewing Co. v. Maloney-Davidson Co., 86 F.2d 815 (6^th Cir. 1936).

This is one of those rare cases in which the domain, <buckeye.biz>, is desirable in its own right and without respect to any intellectual property rights attendant to the name. Accordingly, the foreseeable Internet traffic associated with the name derives from common and widespread use and acceptance of the generic term.  In such cases, successful registration creates a genuine and legitimate business opportunity with numerous avenues of potential business development.  It is this prospect that led Respondent to seek to acquire the name.  

Respondent registered the disputed domain name in good faith. The telephone conversation has been misinterpreted.

C. Additional Submissions

For the reasons set out in Pivotal Corp. v. Pivot Servs. Ltd. f/k/a Graeme Clemett & Assocs. Ltd. FA 112602 (Nat. Arb. Forum), citing Am. Online, Inc. v. Miles d/b/a AD2000D.com, this Panel finds Forum Supplemental STOP Rule 7 is inconsistent with the STOP, that it goes beyond what has been mandated and defined in the STOP, and that no Provider can encroach upon the broad discretion given to the Panel by the STOP and the STOP Rules. Nevertheless, under STOP Rule 10(b), the Panel will have regard to Complainant’s additional submission as if the Panel had requested it under STOP Rule 12.

Complainant’s Additional Submission

It is not necessary for a Complainant to establish exclusive rights, merely that it has rights in a trademark to which the domain name is identical. Burger Brewing involved two users of the mark BUCKEYE, who were allowed concurrent use because the Court held no likelihood of confusion.

Respondent has not established a legitimate interest in the disputed domain name. Mere assertions of ideas for future uses are not “demonstrable plans”. Respondent admits having no concrete business plan before being notified by Complainant of this dispute.

The only reasonable inference from Respondent’s admitted telephone conversation is that Respondent was making an offer to sell for more than $7,000.

FINDINGS

Complainant has not established the elements necessary to entitle it to relief.

DISCUSSION

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, properly brought, 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 whether a disputed domain name is identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

It is common ground that Complainant has rights in the mark BUCKEYE and that the disputed domain name is identical to that mark.  Complainant has established this element of its case.

Respondent’s Rights or Legitimate Interests

Since Complainant bears the onus of proof of absence of rights or legitimate interest in the disputed domain name on the part of Respondent, Complainant must make a prima facie showing of such absence before the evidentiary burden shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web. D2000-0624 (WIPO) and the cases there cited.

Complainant is correct that, on the issue of identity, it is not necessary for a Complainant to establish exclusive rights, merely that it has rights in a trademark to which the domain name is identical. However, on the issue of legitimacy, lack of exclusivity is a relevant consideration, particularly in cases where the mark is in widespread third party use.

Several domain cases have decided that where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner: Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution). See also General Machine Prods Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum); Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum); CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum);  Perricone v. Hirst, FA 95104 (Nat. Arb. Forum); Zero Int’l Holding GmbH v. Beyonet Servs., D2000-0161 (WIPO); Primedia Special Interest Pubs., Inc. v. Treadway, D2000-0752 (WIPO) and First Am. Funds, Inc. v. Ult.Search, Inc.,  D2000-1840 (WIPO).

Other domain cases have decided that where the trademark is merely a common generic word in which the Complainant cannot have exclusive rights, the Respondent has rights and a legitimate interest in the domain by virtue of having been the first to register it: Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum); Ultrafem, Inc. v. Royal, FA 97682 (Nat. Arb. Forum); Cream Holdings Ltd. v. Nat’l Internet Source, Inc. D2001-0964 (WIPO).

It is not the role of the Panel to conduct an independent investigation outside the materials submitted in the record or materials of which judicial notice may be taken: Benefitslink.com v. Haynes FA 95164 (Nat. Arb. Forum); Jazid, Inc. v. Steinar, AF-0807 (eResolution). However, where a party to the proceedings makes reference in the materials it places before the Panel to third party websites, the Panel may visit them without violating this principle, always bearing in mind that caution is required because site content changes.

A search by the Panel at the <superpages.com>  website mentioned by Respondent for the word “buckeye” in Ohio and elsewhere revealed that the word “Buckeye” is in common use in relation to a wide variety of businesses, associations and societies particularly in, but not limited to, Ohio. The Panel concludes that, despite Complainant’s undisputed rights in its registered trademarks in the field of cleaning materials, Complainant does not have exclusive rights in the mark BUCKEYE, which is not strong enough to prevent others from establishing for themselves goodwill in the same mark in other fields: Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO).

The Panel finds that Complainant has failed to make a prima facie showing of absence of rights or legitimate interests on the part of the Respondent. It is therefore irrelevant that Complainant has not authorized Respondent to use its trademark nor to register the disputed domain name; that the name of Respondent is not and does not include any part of the disputed domain name and that Respondent made no plans to use the disputed domain name until after having been notified of this dispute by Complainant. See Rusconi Editore S.p.A. v. FreeView Publishing Inc.,  D2001-0875 (WIPO).

The Complainant has failed to establish this element of its case.

Registration or Use in Bad Faith

Having regard to the Panel’s decision on the issue of legitimacy, it is unnecessary for the Panel to determine this issue.

DECISION

Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.  Pursuant to STOP Rule 15(e)(ii), the Panel decides that subsequent challenges under the STOP against the domain name <buckeye.biz> shall not be permitted.

Alan L. Limbury, Esq. Panelist
Dated: July 2, 2002

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