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Generic Top Level Domain Name (gTLD) Decisions |
National Business Furniture v. Daniel
Smith
Claim Number: FA0204000112590
PARTIES
Complainant
is National Business Furniture,
Milwaukee, WI (“Complainant”), of National Business Furniture. Respondent is Daniel Smith, Austin, TX (“Respondent”).
The
domain name at issue is <officefurniture.biz>,
registered with Namescout.com.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Min
S. Xu, Esquire 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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 5,
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 28, 2002.
On June 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Min S. Xu as the
single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
contends that it owns several U.S. federal trademark applications for its
trademark “officefurniture.com” for use in connection
with “online retail store
services featuring office furniture and accessories in International Class
035.” Complainant also contends that it
intends to continue using this trademark in connection with “online retail store services featuring
office furniture and accessories in International Class 035.” Further, Complainant contends that it
currently operates under the name officefurniture.com and has applied for a
registered trademark
for the logo used for officefurniture.com. Furthermore, Complainant contends that
Respondent registered the domain name in bad faith.
B.
Respondent
Respondent
contends that the trademark owned by the Complainant is not identical to the
domain name in dispute: <officefurniture.biz>, and that the
Complainant has no legal rights to the domain name in dispute. Respondent also contends that the Respondent
has the rights to retain the domain name in dispute, and that the Respondent
has not
registered the domain name in bad faith. Further, Respondent contends that the Complainant is trying to
harass the Respondent and prevent the Respondent from doing business
(Reverse
Domain Name Hijacking allegation under the STOP Policy).
Respondent
submits a copy of a reply email and original email between the Respondent and
the Complainant regarding buying and selling
of the domain name.
It is the Panel’s finding that the
Complainant has not proved that the domain name is identical to a trademark or
service mark in
which the Complainant has rights; that the Complainant has not
proved that the Respondent has no rights or legitimate interests in
respect of
the domain name; and that the Complainant has not proved that the domain name
has been registered or is being used in
bad faith.
Also, it is the Panel’s finding that the
Respondent has not proved that it has rights or legitimate interests in respect
of the domain
name, and therefore subsequent challenges under the STOP Policy
against this domain name shall be permitted.
Further, it is the Panel’s finding that
the Respondent did not provide sufficient showing of bad faith on the
Complainant’s part to
warrant a finding of Reverse 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 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.
Under the STOP Policy, the burden of
proof of rights in the mark is on the Complainant.
Complainant filed two U.S. federal
trademark applications for its trademark “officefurniture.com” for use in
connection with online
retail store services featuring office furniture and
accessories in International Class 035.
Both trademark applications (Serial Numbers 76/330,518 and 76/329,574)
were filed on October 26, 2001 with the first use date in interstate
commerce
of December 1999. However, the Complainant has not yet obtained a
registered trademark in “officefurniture.com”.
The trademark applications are still pending in the U.S. Patent &
Trademark Office under examination.
Under the common law trademark rights,
the Complainant has not demonstrated sufficiently strong identification of its
mark such that
there would be recognition among the Internet users that its
mark identified goods or services in association with or unique to the
Complainant. Further, the name “office
furniture” may be considered as being descriptive. It is noted that one of Complainant’s U.S. federal trademark
applications (Serial Number 76/329,574) has been moved to a Supplemental
Register to establish distinctiveness by acquiring the mark’s secondary
meaning. It is also noted that there is
a disclaimer made in the other Complainant’s U.S. federal trademark
applications (Serial Number 76/330,518),
“No claim is made to the exclusive
right to use ‘officefurniture.com’ apart from the mark as shown” (trademark
logo).
Accordingly, this Panel finds that the
Complainant has not yet established protectable rights in its
“officefurniture.com” or “officefurniture.biz”
mark and thus fails to meet the
burden of proof.
Under the STOP Policy, if Complainant
does not have rights in the mark, the Complaint is dismissed, and the Panel
must also determine
whether Respondent has rights or legitimate interests in
the disputed domain name so as to determine that subsequent challenges under
the STOP Policy against this domain name shall be permitted.
No
evidence has shown that Respondent is the owner or beneficiary of a trade or
service mark that is identical to the domain name. The Respondent has not proved that the Respondent has rights or
legitimate interests in respect of the domain name. There is no proof that the Respondent has obtained any registered
trademark for the domain name or any trademark rights under the
common
laws. Also, the Respondent’s business
has not been commonly known by the domain name. The Respondent stated that their plans were to have a website
fully developed and operational within three to six months. However, there is no further evidence or
demonstrable preparation from the Respondent to use the domain name or a name
corresponding
to the domain name in connection with a bona fide offering of
goods or services. The Respondent’s
unsupported, self-serving allegations alone are insufficient to establish that
the Respondent has rights to legitimate
interests in respect to the domain name
at issue. Twentieth Century Fox Film
Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).
Therefore,
this Panel finds that subsequent challenges under the STOP Policy against this
domain name shall be permitted.
Under the STOP Policy, the burden of
proof of Respondent’s registration or use in bad faith is on the Complainant.
In this case, the Complainant does not
provide evidence to demonstrate that the domain name has been registered or is
being used in
bad faith. On the other
hand, the Respondent provided evidence in its reply email to the Complainant that
the Respondent is planning to develop
the website for search engine. There is no further rebuttal evidence from
the Complainant. It is also noted from
the email correspondences between the Respondent and Complainant that the
Complainant made the initial contact
to the Respondent to buy the domain name.
This Panel finds that no sufficient
evidence of bad faith on the part of the Respondent.
Reverse Domain Name Hijacking
Under the STOP Policy, the burden of
proof of Reverse Domain Name Hijacking by the Complainant is on the
Respondent. Besides mere allegations,
the Respondent failed to provide any evidence that the Complainant has harassed
the Respondent and prevented
it from doing business and/or filed the Complaint
in bad faith. The mere fact that the
Complainant did not make a serious offer to buy Respondent’s domain name but
instead filed a Complaint is not
enough to warrant a finding of Reverse Domain
Name Hijacking.
DECISION
It
is the decision of this Panel that the domain name in dispute, <officefurniture.biz>,
be retained with Respondent, that the Complaint is dismissed, and that
subsequent challenges under the STOP Policy against this domain name are permitted.
Min S. Xu,
Esq., Panelist
Dated: July 8, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1052.html