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Generic Top Level Domain Name (gTLD) Decisions |
Yokogawa Electric Corporation v. Geoffrey
Dean
Claim Number: FA0204000110839
PARTIES
Complainant
is Yokogawa Electric Corporation,
Musashino-shi, JAPAN (“Complainant”) represented by Masakatsu Noguchi. Respondent
is Geoffrey Dean, Alresford, UNITED
KINGDOM (“Respondent”).
The
domain name at issue is <stardom.biz>,
registered with Domain Bank, Inc.
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.
Louis
E. Condon, 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 25, 2002; the Forum
received a hard copy of the Complaint on
April 25, 2002.
On
May 14, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 3,
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 30, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Louis E. Condon as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
“Domain name “stardom.biz” owned by
G. Dean is identical to Complainant’s
Registrations “stardom” DE 30115194
AU 867960 and US Serial Number
76226012 in spelling and pronouncing.
G. Dean is selling many domain names
for the purpose of obtaining a complaint is
using profits from
selling domain names. Not using in the field of actual
trade.
I guess that the URL address below
was opened by Mr.G. Dean
The reason why is that he is using
his name on the top page of the URL.
If the Web page is further
developed, it shows “stardom.biz”
It is very clear for us that his
purpose is to sell “stardom.biz” to someone to need
its name at high price.
In view of business moral his
purpose is very unfair to the general public.”
(see URL http/www.geoffreydean.co.uk)
(Appending
data; geoffreydean_entry.bmp,geoffreydean_stardom.bmp)
B.
Respondent
“
My use of Stardom.biz is in it’s
generic sense, (to achieve “stardom”) and not for use as a trademark. My Multi
Level Marketing business ( the products
and services of which do not conflict
with those offered by the Complainants Trademark) reward people with
achievement levels. Our
distributors aspire to become “stars”, their goal being
to reach “stardom”.
My
use of stardom.biz is to enable participants of a sale programme to see their
position on achievement recognition tables which
acknowledge the volume of
sales attributed to each “star”
The
URL address: www.geoffreydean.co.uk
is my EMAIL address holding page, supplied by Easyspace.com (my ISP). ALL
persons that purchase a domain name through Easyspace.com
are given a holding
page, it is NOT used as a website by me. The information on that page is owned
by Easyspace.com and I have no
control over it at all. Any domain name sales
generated by the page are transacted through Easyspace.com not me. The
information
supplied by the Complainant Appending data: geoffreydean_entry.bmp,geoffreydean_stardom.bmp
was supplied to them by Easyspace.com.
If they tried to purchase the domain
Stardom.biz
they would have been told that the domain was not available, (the
Domain
was and still is on IP hold). I have no intention of selling or transferring
Stardom.biz.
My
use of stardom.biz is to enable participants of a sales programme to see their
position on achievement recognition tables, which
acknowledge the volume of
sales attributed to each “star”’
I find that the Complainant has
registered the subject trademark in Germany and Australia, and the registration
is pending in the
United States. The Respondent does not contest the claimed
registration but states his use of the name will be in a generic sense
for
recognition of employees’ performance. Respondent makes no other claim to a
right to use the mark. I further find that the name
is being offered for sale
as alleged by the Complainant.
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.
The Respondent did not attempt to
prove that it is the owner or beneficiary of a trade or service mark that is
identical to the domain
name; nor did he claim use of or preparations to use
the domain name in connection with a bona fide offering of goods or services;
nor that he has been commonly known by the domain name. Because of the intended
commercial nature of websites hosted at “.biz” domain
names, STOP Policy
Section 4( c) does not contemplate that a Respondent may demonstrate its
rights/interests through legitimate or
noncommercial fair use as the
corresponding paragraph in the UDRP does.
Even when a Respondent represents that it intends to use a domain name for a
commercial purpose, its use under STOP Policy Section
4( c)( ii) must be for a
bona fide offering of goods or services.
For these reasons one must conclude that the Respondent has no rights or
legitimate interest in the domain name
Registration or Use in Bad Faith
Evidence that the Respondent registered
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the
name to Complainant or its competitor for valuable
consideration in excess of the Respondent’s out-of-pocket costs directly
related
to the domain name will satisfy the bad faith requirement of STOP
Policy Section 4( b)(i). Some UDRP Panels have held that even general
offers to
sell, without a specific named price, will satisfy the bad faith element of the
UDRP. See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., F 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding
that “general offers to sell the domain name, even if no certain price is
demanded,
are evidence of bad faith”).
STOP claims differ from UDRP claims in
one very significant and fundamental way. Unlike the UDRP, under STOP when a
registrant (Respondent)
registers a domain name for which an IP Claim was
previously filed, the registrant is notified of the potential for trademark
infringement before being allowed to
proceed with the registration. One Panel has held that registration of a domain
name despite such notice, in appropriate circumstances,
could “almost preclude
any possibility of registration in good faith of a domain name.” See Gene Logic Inc. Bock, FA 103042
(Nat. Arb. Forum Mar.4, 2002). This appears to the Panel to be one of those
occasions where the circumstances are appropriate
and, therefore, I find that
the Respondent’s registration was in bad faith.
DECISION
The
Complainant having met the requirements of Paragraph 4(a) of the STOP Policy
and the Panel having found the registration to be
in bad faith, the domain name
<stardom.biz> shall be TRANSFERRED to the Complainant, and
subsequent challenges under the STOP Policy against this domain name SHALL
NOT be permitted.
Louis E. Condon, Panelist
Dated: July 3, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1027.html