NATIONAL ARBITRATION FORUM

File No.: FA0204000112469

GAIAM, INC.

                                    Complainant,

v.                                                                                                         DECISION

NIELSEN,

                                    Respondent.

                                                                       

PARTIES:       

            Complainant is Gaiam Inc., Broomfield, CO, USA  (“Complainant”) represented by William Brown.  Respondent is Nielsen, Koebenhavn, DENMARK (“Respondent”) represented by Jens Nielsen.

REGISTRAR AND DISPUTED DOMAIN NAMES:

            The domain name at issue is <gaia.biz> registered with Joker.com.

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.

            Hon. H. Curtis Meanor, 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 26, 2002, the Forum received a hard copy of the Complaint on April 26, 2002.

            On May 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 Response was received and determined to be complete on June 19, 2002.

            On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. H. Curtis Meanor as the single Panelist.

            Respondent claims that he did not receive the documents pertaining to this case until May 29 and that his time to respond should run from that date.

            In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.

RELIEF SOUGHT:

            Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS:

            A.  Complainant

            The Complainant, Gaiam Inc. is a for-profit company organized under the laws of the State of Colorado and licensed for business in Germany and the European community.  It is the owner of the following trademarks:

1. Trademark “Gaia”, registered May 16, 1995 for computer software for pen-based computer systems for text processing, business presentations, personal business communications and personal productivity functions. 

Complainant claims that it is currently preparing trademark filings to add international classes 35 and 41 to the “Gaia” trademark for wholesale distributorships and mail order catalog services featuring health, fitness, exercise and yoga products.

2. Trademark “Gaia Generation” registered April 13, 1999 for mail order catalog services, audio recording and production.

3. Trademark “Gaiam” registered May 11, 1999 for pre-recorded audio tapes and video tapes, wholesale distributorships, mail order catalog and retail store services, audio and video tape recording and production services, environmental product testing services.

4. Trademark “Gaiam” registered March 16, 1999; description - nutritional supplements. 

Complainant claims it is a leading provider of information, goods and services to customers who value the environment, a sustainable economy, healthy lifestyles, alternative healthcare and personal development.  The company’s operations concurrently generate in excess of $100 Million in annual revenues in the United States and Internationally.  Gaiam Inc. stock is traded  in the United States on the NASDAQ stock exchange under the ticker symbol of “Gaia”.  Gaiam Inc. has invested substantial funds and resources building consumer awareness of the Gaiam brand and trusts its products to its “Gaiam”, “Gaia Generation” and “Gaia” trademarks.  The company also has a family of websites, including <Gaiam.com> and <Gaia.com>, under which much of its business is transacted.  Contributing to Gaiam’s competitive and leadership position in this industry is the general public’s and internet users familiarity with and understanding of Gaiam, Inc. via its trademarks and website domains utilizing the words “Gaia” and “Gaiam”.  Complainant claims that the domain name <gaia.biz> is identical to the Gaiam trademarks described above and its “GAIA” symbol for its stock being traded on the NASDAQ stock exchange.  Complainant also asserts that name <gaia.biz> is substantially similar to Gaiam’s website domain names, <Gaia.com> and <Gaiam.biz>.  Complainant asserts that there would be a strong likelihood of confusion among the public and internet users between the Respondent and the Complainant if Respondent is permitted to use the domain name <gaia.biz>.  Complainant further asserts that the use of the domain name <gaia.biz> by Respondent would diminish the value of Gaiam’s brand and public reputation with the public at large, both in the United States and Internationally.  Complainant asserts Respondent is not the owner or beneficiary of the trade or service mark “Gaia”, “Gaiam”, or any derivation thereof.  Complainant alleges it conducted an extensive search of Danish, European Community and U.S. trademark and service mark registrations and has determined Respondent has not registered any such trademarks or service marks.  Complainant has also conducted a search of Danish telephone and business directories and has not been able to identify a legitimate use of the domain name <gaia.biz> by the Respondent.  Complainant also alleges that an extensive search of Respondent’s online presence has detected no evidence that Respondent has ever been commonly known by the disputed domain name or any derivation thereof.  There also appears to have been no activity, business or otherwise, conducted by Respondent in connection with the names “Gaia” or “Gaia.biz” or any derivation thereof.

            Complainant concludes by asserting that the use of the domain name <gaia.biz> by the Respondent will attract users to the Respondent’s website and would create confusion with the existing trademarks and domain names used by Gaiam, Inc. 

B.         Respondent

Respondent begins by noting that the name “Gaia” is a Greek word for the earth and in Greek Mythology “Gaia” is the name of a God of the Earth.  Respondent claims that the name Gaia during the last twenty to thirty years has become a term for environmental and ecological issues.  He states that his marketing of environmental and ecological information and products is not in competition with the Complainant.  It is asserted that the domain name was not registered by the Respondent for the purpose of selling, renting or transferring a domain name to Complainant or to a competitor of the Complainant.  Respondent notes that when he started his company, which is in the business of supplying environmental and ecological information and products, he searched the name “Gaia” and found that it was already taken.  Thereafter, he registered other domain names. 

FINDINGS:

1. Complainant has met its burden to prove by a preponderance of the evidence that the domain name at issue is identical to trademarks in which Complainant has rights.

2. Complainant has met its burden to prove by a preponderance of the competent evidence that Respondent has no rights or legitimate interest in respect to the domain name at issue.

3. Complainant has met its burden to prove by a preponderance of the evidence that the domain name at issue has been registered in bad faith.

 DISCUSSION:

            Paragraph 15 (a) of the STOP Rules instruct 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 principle of law it deems applicable.”

            Paragraph 4 (a) of the STOP policy requires that Complainant must prove each of the following three elements to obtain an order  that the domain name should be transferred:

1. the domain name is identical to a trademark or service mark in which the Complainant has rights;

2. Respondent has no rights or legitimate interest in respect of the domain name;

3. the domain name has been registered or is being used in bad faith.

             Identical or Confusingly Similar

As noted above, the Complainant is the owner of several registered USPTO trademarks, one of which is “Gaia”.  The use of the suffix “biz” by Respondent as distinguished from the suffix “.com” by Complainant is irrelevant.  The differences in these suffixes cannot be utilized to distinguish the domain names and without the suffix they are of course identical.  See Pillsbury Co. v. Prebake Scandanavia, FA102970.  (Nat. Arb. Forum Jan. 31, 2002).

Rights and Legitimate Interests

            Respondent does not claim a registered trademark or service mark for “Gaia” and leaves uncontradicted Complainant’s evidence that an extensive search of Danish, European Community and U.S. trademark and service mark registrations has determined that Respondent has not registered any such trademarks or service marks.  Therefore, it must be concluded that Respondent has no registered trademark or service mark for “Gaia”.

            Respondent has not claimed that he has used the name “Gaia” in a bona fide offering of goods or services and leaves uncontradicted Complainant’s evidence that a search of Danish telephone and business directories has not been able to identify a legitimate use of the domain name <gaia.biz> by the Respondent.  Therefore, it must be concluded that the Respondent has not used the name “Gaia” in a bona fide offering of goods or services.

            It appears that there has been no business activity using the name “Gaia” by the Respondent nor does the Respondent claim that such activity has taken place.  Therefore, it must be concluded that Respondent has never been commonly known by the domain name in dispute.

            Registration and Use in Bad Faith

            Complainant has a $100 Million annual business.  Respondent asserts that it and Complainant do not compete.  If there is any present competition between Respondent and Complainant it is minimal.  Nonetheless, Respondent researched the domain name “Gaia” prior to registering it with Joker.com and his search showed him that the name “Gaia” was already in use by Complainant.  Since Complainant has a wide range of products for sale, those familiar with Complainant upon seeing Respondent’s website domain name, <gaia.biz>, obviously would confuse Respondent’s offerings with the items for sale by Complainant.  Since Respondent knew that the name “Gaia” was already in use, his registration after finding out that fact leads to the conclusion that his registration of the domain name <gaia.biz> was in bad faith.

DECISION:

            The Complainant having established all three elements required by the Start-up Trademark Opposition Policy, it is concluded that the requested relief shall be granted.

            Accordingly, it is ordered that the domain name, <gaia.biz> be transferred from Respondent to Complainant.  Further challenges against this domain name shall not be permitted under the STOP Policy.

                                                                                   

HON.H. CURTIS MEANOR

Panelist

DATED:  July 2, 2002

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Document #:125298