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Generic Top Level Domain Name (gTLD) Decisions |
START-UP
TRADEMARK OPPOSITION POLICY
DECISION
Hachette
Filipacchi Presse v. Corporate Services
Claim Number:
FA0204000109739
PARTIES
Complainant is Hachette Filipacchi
Presse, Levallois Perret, FRANCE (“Complainant”). Respondent is Corporate Services, Miami, FL, USA (“Respondent”) represented by Paul D.
McGrady, of Ladas & Parry.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <scoop.biz>,
registered with Registration
Technologies, 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.
Judge Richard B. Wickersham,
(Ret.) 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 18, 2002; the Forum received a hard copy of the
Complaint on
April 23, 2002.
On April 24, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of May 14, 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 Start-up Trademark Opposition Policy (the
“STOP Rules”).
On May 13, 2002, pursuant to Respondent’s
request, Respondent was granted an extension for filing its Response, making
the new Response
deadline June 3, 2002.
A timely Response was received and
determined to be complete on May 30, 2002.
On June 25, 2002, pursuant to STOP Rule
6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single
Panelist.
RELIEF
SOUGHT
Transfer of the domain name from
Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
[a] Identity:
“It shall be recognized that the domain
name SCOOP.BIZ is strictly identical to the Trademarks SCOOP of
HACHETTE FILIPACCHI PRESSE and causes with these Trademarks an obvious
likelihood of confusion.
The disputed domain name SCOOP.BIZ
incorporates the Complainant’s well-known trademark in its entirety and causes
confusion that there may be an association between
the Respondent’s domain and
the Complainant. See Little
Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE
trademark and service mark); see also American Golf Corp.
v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the
domain name <americangolf.net> is identical and confusingly similar to
Complainant’s
AMERICAN GOLF marks).
Further, the addition of a generic code
top-level domain (i.e., “.biz”) is irrelevant for purposes of determining the
identical nature
or confusing similarity between Complainant’s trademark SCOOP
and SCOOP.BIZ. The addition of
the generic code top level domain designation .biz does not serve to
distinguish those names from Complainant’s marks
since .biz is a common
Internet address identifier that is not specifically associated with
Respondent.”
[b] Respondent
has no rights or legitimate Interests on the domain name SCOOP.BIZ
“Respondent has registered the domain
name SCOOP.BIZ on March 27, 2002, namely after the filing and the
registration of the Trademarks SCOOP.
Moreover, Respondent has never begun
to use its domain name SCOOP.BIZ in commerce, and Respondent has never
been known by the public under the denomination SCOOP or SCOOP.BIZ.
The mere registration of SCOOP.BIZ
as domain name is not sufficient to establish Trademark or Service Mark rights
on the denomination SCOOP.BIZ.
“To establish Tradmark rights in a domain
name it takes more than mere registration”.
(See Millennium Broadcasting Corporation v. Publications
France Monde, AF-9985752 / Sampatti.com Ltd v. Chetan Rana, AF-0249
/ Powarchute Inc. v. Buckeye Industries, AF-0076).
It has to be concluded that the
denomination SCOOP and the domain name SCOOP.BIZ are not
seriously used by Respondents who have no Trademark Rights on the denomination SCOOP
and no legitimate interest for registering SCOOP.BIZ.”
[c.]
Respondent reserved the domain name SCOOP.BIZ in bad faith:
“Since the Complainant’s well-known
Trademarks and SCOOP are intensively used in Europe, respondent which is
allegedly located in Europe could not ignore at the date of the registration
of
the domain name SCOOP.BIZ, the Complainant’s Trademark Rights on the
denomination SCOOP.”
This “registration disturbs HACHETTE
FILIPACCHI PRESSE’S business, creating with its well-known Trademark SCOOP
an obvious confusion for the public.”
“The SCOOP.BIZ domain name is
identical to Complainant’s SCOOP.BIZ trademark and the Internet user
will likely believe that there is an affiliation between Respondent and
Complainant. See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it is “inconceivable that the respondent could
make
any active use of the disputed domain names without creating a false
impression of association with the Complainant”);”
“Respondent has “passively held” the
domain name SCOOP.BIZ and this fact is proper to establish Respondent’s
bad faith: See Bloomberg L.P. v. Xuebao Wang, (NAF Claim Number:
FA0012000096305) - See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) concluding that the Respondent’s passive holding
of the domain name satisfies the requirement of
paragraph 4(a)(iii) of the
Policy); See also Alitalia-Linee Aeree Italiane S.p.A. v. Colour
Digital, D2000-1260 (WIPO Nov. 23, 2000) finding bad faith where Respondent
made no use of the domain name in question and there are no other
indications that the Respondent could have registered and used the domain name
in
question for any non-infringing purpose.”
B.
Respondent
“Respondent, “Corporate Services” is a
division of Signature Domains, an ICANN-approved registrar of generic top-level
domains. Signature Domains was
instructed to file a domain name application for SCOOP.BIZ in order to
ensure Monsanto Company’s opportunity to reflect Monsanto Company’s valuable SCOOP
trademark within this new domain space.
Although the domain was awarded to
Monsanto Company, the registry details appear in the name of Corporate
Services. Signature Domains plans to
correct this title defect as soon as this matter is resolved and the registry
lock is lifted.”
“‘Corporate Services,’ Signature Domains
and Monsanto Company are all referred to collectively herein as “Respondent” as
Corporate
Services/Signature Domains is the agent of Monsanto Company for
purposes of filing the domain name application for SCOOP.BIZ and holding
the same until this matter is resolved and the registry lock is lifted.
The Respondent should be considered as
having rights or legitimate interests in respect of the domain name that is the
subject of
the complaint. STOP Rule
3(c)(ix)(2); STOP Policy ¶ 4(a)(ii).
Monsanto Company is the owner of Egyptian
Trademark Registration No. 70306 for the mark SCOOP covering
“pharmaceuticals, veterinary and sanitary substances; plasters, material for
bandaging; material for stopping teeth; dental
wax; disinfectants; preparations
for killing weeds and destroying vermin” in international class 5.”
“By emails of May 6, 2002; May 10, 2002;
May 13, 2002; and May 14, 2002, Monsanto Company informed Complainant of its
legitimate rights
and its registered SCOOP trademark, provided a copy of
the relevant trademark registration certificate and, under the circumstances,
invited Complainant to
withdraw its Complaint.”
“Finally, by email of May 15, 2002,
Complainant’s attorneys responded and indicated that, while Complainant was
“not concerned” with
the title issue related to SCOOP.BIZ, i.e., the
domain being held by Corporate Services for the benefit of Monsanto Company,
Complainant intends to maintain its Complaint
since it believes it is “more
entitled” to own SCOOP.BIZ since its client uses its trademark “SCOOP”
for communication services and Monsanto Company owns and uses its trademark SCOOP
for goods, which in Complainant’s opinion are not easily sold via the
Internet.”
“Respondent has registered the domain
name primarily for the purpose of using the domain to reflect its own trademark
and to promote
its own goods and services via the Internet. Respondent has no intention to sell, rent,
or otherwise transfer the domain name registration to the Complainant or to a
competitor
of the Complainant, for valuable consideration in excess of Respondent’s
documented out-of-pocket costs directly related to the domain
name or under any
conditions;”
“Respondent has registered the domain
name in order to reflect its own registered mark, not to prevent the
Complainant from reflecting
its mark in a corresponding domain name. Although Complainant asserts in its
Complaint that Corporate Services is “located in Europe,” Corporate Services is
located in Miami,
Florida and Monsanto Company’s principal place of business is
St. Louis, Missouri, neither of which is Europe. Neither Corporate Services nor Monsanto Company knew of
Complainant’s SCOOP mark, nor would they have any reason to know of
Complainant’s SCOOP mark, apparently used limitedly in France alone, nor
would such knowledge have impeded Monsanto Company’s attempt to register SCOOP.BIZ
due to its own legitimate rights to the SCOOP trademark;” and,
“Respondent has registered the domain
name primarily for the purpose of use in its own business, not for the purpose
of disrupting
the business of any other party.
Complainant, who is not a competitor of Monsanto Company, can make no
legitimate claims to the contrary;”
“Further, it would be very unlikely that
the average consumer would think Complainant “sponsors” Monsanto Company as
Monsanto Company
is a multinational agricultural giant known throughout the
world and is unlikely to be confused with Complainant as the two are not
competitors.”
“Respondent requests that the Panel adopt
a similar position as that which can be found in numerous panel decisions under
the UDRP,
namely that in cases of competing legitimate rights that the relief
be denied. See Telaxis
Communications Corp. v. William E. Minkle, Case No. D2000-0005; and Meredith
Corp. v. CityHome, Inc., Case No. D2000-0223.”
DISCUSSION
AND FINDINGS
A. The evidence presented by the parties
demonstrates that Complainant’s Trademark Registration SCOOP is
identical to the domain name <SCOOP.BIZ>. STOP Rule 3(c)(ix).
B. The evidence presented by the
parties demonstrates that Respondent did have rights or legitimate interests in
respect of the domain
name. The domain
was awarded to Monsanto Company and Corporate Services/Signature Domains is the
agent of Monsanto Company for purposes
of filing the domain name application
for <SCOOP.BIZ>. STOP Rule
3(c)(ix)(2); STOP Policy §4(a)(ii). Monsanto
Company owns Egyptian Registration mark SCOOP, No. 70306.
C. The evidence presented by the
parties demonstrates that the registration of Respondent’s domain name <SCOOP.BIZ>
was in good faith.
In order to obtain an order that a domain
name be transferred, the Complainant must prove:
i.
The domain name is identical to a trademark or service mark in which the
Complainant has rights; and,
ii.
The Respondent has no rights or legitimate interests in respect of the
domain name; and,
iii.
The domain name has been registered or is being used in bad faith. STOP Policy §4(a).
DECISION
We find that both Complainant and
Respondent have rights or legitimate interests in the disputed domain
name. Hence, the Complaint is hereby DISMISSED. Further, subsequent challenges to this
domain name, as against the Respondent, under the STOP Policy SHALL NOT
be permitted against this domain name.
JUDGE RICHARD B. WICKERSHAM, (Ret.
Judge), Panelist
Dated: July 8, 2002
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