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Generic Top Level Domain Name (gTLD) Decisions |
START-UP TRADEMARK OPPOSITION POLICY
DECISION
Corrections Corporation of America v.
Creative Curriculum Associates Co.
Claim Number: FA0204000112490
PARTIES
Complainant is Corrections Corporation of America, Nashville, TN (“Complainant”)
represented by Brian S Childs. Respondent is Creative Curriculum Associates Co., Gladstone, OR (“Respondent”)
represented by Mark Page.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cca.biz>, registered with Verisign - Network Solutions, 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.
Robert T. Pfeuffer, Senior District Judge
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 15, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 4, 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 31, 2002.
On June 19, 2002, pursuant to STOP Rule
6(b), the Forum appointed Robert T. Pfeuffer as the single Panelist.
RELIEF SOUGHT
Transfer of the domain name from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has requested relief under STOP Rule
3(c)(ix) and Supp. Stop Rule 4(b). It is alleged that: A) The domain name is
identical to a name under which the Complainant’s customers know them and under
which they
operate. B) That Respondent
does not appear to be engaging in any material business activities and that no
evidence exists that Respondent
uses the name or initials “CCA”. Further, that no Federal records exist
indicating a registration or claim by Respondent to the initials or trademark
“CCA”. C) That Respondent has acted in bad faith in registering the domain
name seeking to use <cca.biz>. That Respondent does not appear to
be engaging in any material business activity and there is no evidence that
Respondent uses the
name or initials “CCA” and that the registration of the
domain name by Respondent is primarily for the purpose of selling, renting
or
otherwise transferring the domain name registration for valuable
consideration.
B. Respondent
Respondent denies all the allegations in the Complaint and
specifically states that the domain name <cca.biz> utilizes the
acronym of Respondent’s corporate name Creative Curriculum Associates
Company. Attached to its Response is
Exhibit “A”, a specimen of Respondent’s letterhead showing the mark “CCA”.
Respondent states that it provides
services in connection with education
curriculum, student/teacher assessment, consulting, education software and
support services
for school districts, higher education and other education
agencies. It further states that it
does not in any way compete with Complainant in the area where Complainant has
a trademark registration.
Respondent states that it does not work in the
operation of correctional and detention facilities for others or the building,
design
and construction of correctional and detention facilities which is the
apparent business operation of Complainant.
Respondent alleges that it has rights and a legitimate
interest in respect to the domain name.
It is a corporation organized under the laws of Oregon and has operated as such since March
12, 1996 pursuant to proper registry with the Oregon Secretary of State’s
Business Registry. Respondent states it
has used the initials CCA on its letterhead and is known as CCA by its
customers. It has included as Exhibit
“B” a sample of its letterhead.
Respondent points out that although it has not registered a
trademark or service mark, nevertheless it is known to its customers as
CCA and
has continually used that name and mark since its incorporation in 1996. Also
until the <cca.biz> name became available and subject to
registration, it had no knowledge of any dispute regarding the “CCA” name and
had never heard
of Corrections Corporation of America.
The Response contends that the use of the
domain name <cca.biz> is in connection with Respondent’s business
of providing, servicing and selling its services to education systems. That its business is not in competition with
Complainant’s business and that Respondent has used its corporate name and an
acronym
for its name with its customers.
Numerous customers are named by way of example including the North
Carolina Department of Public Instruction, Junior Achievement,
Katabwa County
Schools and Louisiana State University among others. Respondent further contends that it is a bona fide entity which
has used its name and acronym of its name with its customers who are
school
districts, state school systems and other education agencies and does not
believe that any of its customers have confused
Respondent with the
Complainant, Corrections Corporation of America. Respondent has furnished evidence of its ongoing business as set
out in Exhibit “C” showing material business activities and sample
business
proposals. It further states that it
does not believe anyone seeking contact with Corrections Corporation of America
will be confused if they
should encounter Creative Curriculum Associate
Company’s website since the Respondent has nothing to do with correctional or
detention
facilities.
C. Additional Submissions
Neither Complainant nor Respondent have filed additional
submissions for consideration by the Panel.
FINDINGS
The Panel finds as follows:
1. That
both Complainant and Respondent are bona fide business entities.
2. That
Complainant is in the business of providing the operation of correctional and
detention facilities for others and the building,
design and construction of
correctional and detention facilities.
3. That
Complainant has used the acronym CCA in interstate commerce as early as 1990.
4. That
it has also secured from the U.S. Patent and Trademark Office Registration
Certificate Number 2253057 for use in connection with
the mark CCA.
5. That
Respondent is an Oregon corporation doing business since it was registered with
the Oregon Secretary of State’s Business Registry
on March 12, 1996 under
Registry Number 505278-87. (See Exhibit
“A” to Response.)
6. That
Respondent has used its initials CCA on its letterhead and that it is known as
CCA by its customers.
7. That
Respondent is commonly known by its customers as CCA and has continually used
that mark since its incorporation in 1996.
8. That
at the time of registering the domain name <cca.biz>, Respondent
had never heard of Corrections Corporation of America.
9. That
Respondent is not in competition with Complainant and has no intention to use
the domain name in competition with Complainant’s
business.
10. That
Respondent has a bona fide business interest in using the domain name <cca.biz>
in its business of providing services and selling its services to education
systems.
11. That
Respondent does not anticipate that any of its customers have confused
Respondent with Corrections Corporation of America nor
that anyone seeking
contact with Complainant would be confused with the business and services
offered by Creative Curriculum Associate
Company and Complainant’s business
dealing with correctional or detention facilities.
12. That
Respondent has not offered to sell, rent or otherwise transfer the domain
name registration to Complainant and/or
anyone else for valuable consideration.
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 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.
Domain Name Identical to Complainant’s
Service Mark
It is undisputed that the marks are
identical. The use of “.biz” in the
disputed name is not a factor and shall be ignored by the panel in determining
that the names are identical. See
Princeton Linear Assoc., Inc. v. Copland
o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001 (finding
that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be
ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted
rights); see also Commercial
Investors Realty v. Bank of New York, FA 103040 (Nat. Arb. Forum Feb. 18,
2002) (finding the Complainant’s THE INVESTOR’S CHOICE! mark to be identical to
the <investorschoice.biz>
domain name).
See further the decision in Efutures.com,
LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002)
(finding that <e-futures.com> and <efutures.com> were both
identical to the
mark UTURES, although
ruling Complainant did not have rights in the mark on unrelated grounds).
Complainant’s and Respondent’s Rights or
Legitimate Interests
Both Complainant and Respondent have
established that each has rights and legitimate interests in respect to the
domain name, which
is the subject of this Complaint. Although unsupported by
separate Exhibits, the statement made by Complainant that it has first
used the
mark “CCA” in interstate commerce as early as 1990 has not been challenged by
Respondent. Complainant, on the other
hand, has failed to discharge its burden by presenting competent evidence that
Respondent has no rights
or legitimate interests in respect to the domain name.
Respondent has stated it has used “CCA” since it began business in 1996 and
has
supported its contention of use by Exhibits “A”, “B” and “C”. See K2r Produkte AG v. Trigano, D2000-0622
(WIPO Aug. 23, 2000) (finding that the Respondent had rights and legitimate
interests in the domain name <k2r.com>
under UDRP ¶ 4(a)(ii) where he
registered the domain name for a website in connection with his mother’s store,
“KIRK ET ROSIE RICH”);
see also 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>).
Even where discussion of the actual sale
of the domain name has taken place, bad faith is not necessarily found even
under those circumstances.
See LifePlan
v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the
mere offering [of the domain name for sale], without more, does not
indicate
circumstances suggesting that Respondent registered the domain name primarily
for the purpose of selling . . . the domain
name to the Complainant”); see also Open Sys. Computing AS v.
Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was
not acting in bad faith by discussing a sale when Complainant initiated
an
offer to purchase it from Respondent); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001)
(finding no bad faith where “the Complainant offers the Respondent far more
than the Respondent
paid for the disputed domain name and the Respondent asks
for an even larger sum”).
The broad allegations made in the
Complaint being unsubstantiated by competent evidence, some inference that the
Complainant is engaging
in reverse domain name hijacking is raised. The panel
declines to make such finding against Complainant and does not find an attempt
at reverse domain name hijacking under the circumstances of these facts.
DECISION
The complaint is dismissed. Further challenges against this domain name
under the STOP Policy shall not be permitted.
ROBERT T. PFEUFFER, Panelist
Dated: July 3, 2002
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