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Generic Top Level Domain Name (gTLD) Decisions |
Dana Chase Publications Inc. v. RGnames
Claim Number: FA0204000112441
PARTIES
Complainant
is Dana Chase Publications Inc., Oak
Brook, IL, USA (“Complainant”) represented by Tim Somheil. Respondent is RGnames, Beijiing, CHINA (“Respondent”)
represented by Byeong-guk Choi.
The
domain name at issue is <appliance.biz>,
registered with Wooho T&C Co. d/b/a
RGNames.
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.
Fernando Triana, Esq., 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
May 1, 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 June 3, 2002.
On June 25, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Fernando Triana, Esq., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant
publishes a magazine named “Appliance” addressed to those involved in the
design and manufacturing of consumer, commercial,
business and medical
appliances. According to the Complainant, the magazine has a worldwide
circulation and has been published for
57 years and has used the name
“Appliance” since July, 1969. The magazine is also published in the following
special editions: European
Edition, Latin American Edition and China Edition.
The Complainant is also the owner of the domain
names<appliancemagazine.com>
and <appliance.com>. The latter is a
website for U.S. appliance shoppers and buyers.
Complainant
contends that the domain name <appliance.biz>
is identical to the trademark “Appliance” registered by it. Complainant also
contends that the Respondent is known to be a reseller
of domain names and is
not known to make, sell, publish or provide any product, service or website
with the name “appliance”. According
to the Complainant, the Respondent is not
known to have registered the name “appliance” to identify itself or its
products prior
to registering the <appliance.biz>
domain name. The Respondent is not known to have any purpose for registering
the domain name other than to resell it or rent it.
Therefore, Complainant
concludes that the Respondent should have no rights to the name “Appliance”.
With
respect to bad faith, the Complainant states that the Respondent is a reseller
of domain names and promotes this service on the
website <Rgnames.com>.
Due to the activity of the Respondent and its lack of legitimate purpose for
registering the domain
name <appliance.biz>,
it would become possible for any competitor of Complainant to take control of
the Complainant’s trademark “Appliance” in the form
of the <appliance.biz> domain name. Complainant also contends that
this would be a strategy of the Respondent to force the Complainant to purchase
the domain name at any cost in order to
block such competitive use.
B.
Respondent
Respondent
contends that the word “Appliance” is generic to the public and must be used by
everybody without restrictions on the Internet.
According to the Respondent,
1.080.000 web pages are found after a search on Yahoo which involve the word
“Appliance”, such as <expertappliance.com>,
<appliancesales.com>
and <amercian-appliance.com>. The domain names <appliance.net> and
<appliance.org> are
also registered on behalf of companies different from
the Complainant. Respondent also states that the word “Appliance” has a meaning
in the English dictionary.
Respondent
seeks to call the attention of the Panel to a recent WIPO decision regarding
the domain name <internetnews.info>[1].
In said decision, the Panel found that the combination of the words “Internet
news” can be used by different owners and domain extensions
even when existing
trademark rights on the part of the Complainant. The Panel also stated that
there was no bad faith considering
that the domain name was made up of two
current English words and its combination could not be considered unusual or
sophisticated.
Respondent
further contends that he obtained the domain name <appliance.biz> by the most fair method among the lot of
people who wanted it or needed it. This, because the word “Appliance” is open
to the general
public on the Internet. This leads the Respondent to conclude
that he has legitimate interests in respect to the domain name <appliance.biz>.
Respondent
states that he never registered <appliance.biz>
with the purpose of selling, renting or otherwise transferring it to the
Complainant or its competitors.
Respondent
clarifies that he is not both a reseller and a registrar. Respondent signed an
agreement with the registrar Rgnames, by
which the registrar manages the domain
name <appliance.biz> as its
temporary holder on behalf of the Respondent. The registrar and the Respondent
are separate persons.
Respondent
also contends that it will use the domain name <appliance.biz> for its own business, i.e., sales of used
cars, which is different from Complainant’s business. Respondent adds that this
would not
create confusion with the Complainant nor with the Complainant’s
marks. However, up to the filing of its response, Respondent has
not been able
to use the domain name <appliance.biz>
as planned due to the fact that the domain name is locked by Neulevel until
completion of the controversy. Therefore, Respondent
states that he never
registered or used the domain name <appliance.biz>
in bad faith and shall never use it in bad faith in the future.
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.
Complainant
contends that it has rights over the trademark “Appliance”. Although it states
in its Complaint that such trademark is
“registered”, there is no evidence in
the file of the existence of such registration. However, under the STOP Policy,
a Complainant
may establish common law rights over its mark. Due to the lack of
evidence of a registered trademark, the Panel will assume that
the Complainant
intends to prove that the domain name <appliance.biz>
is identical to its mark “Appliance” relying on its common law rights.
It
is the Panel’s task to determine whether or not the Complainant holds any
rights over the mark “Appliance”. The worldwide accepted
definition of a
trademark, involves the concept of distinctive force as the most relevant
element. This distinctive force gives a
sign the capability to identify the
products or services of its owner and differentiate them from the products or
services of other
participants in the market. A sign lacks of enough
distinctive force when it is generic, confusingly similar to a previous
trademark
or descriptive, among other causes.
In
the case of generic terms, such condition must be analyzed in connection with
the kind of products or services that are identified
with the sign. For
example, the word “car” would be generic if used in connection with parts for
automobiles but distinctive when
used to identify clothing goods or drinks.
Notwithstanding,
a generic term can achieve distinctive force when due to its use and
recognition by the consumer public, the word
gets a secondary meaning that
allows it to identify products or services without any risk of confusion in the
market. In this case
the generic term can become a trademark.
Studying
the particulars of the sign “Appliance” and its use in connection with the
commercialization of all kinds of appliances,
the Panel finds that such word is
a generic term over which the Complainant can not hold trademark rights.
Likewise, Complainant
has not been successful in proving that the sign has a
secondary meaning that could turn it into a trademark. To this end, Complainant
must have proved that its use of the sign “Appliance” has added to the generic
term such recognition among the consumers that it
is immediately identified by
consumers with its products or services. Unfortunately, Complainant has failed
to prove so and no registration
of said term before the USPTO was either found
on the file. (See Vietnam Venture Group Inc v. Cosmos Consulting Gmbh finding
that
“because Complainant has not established rights in the mark, “VVG,” the
Complaint must be dismissed. First,
Complainant does not hold a registered trademark in VVG. Second, Complainant has not demonstrated
sufficiently strong identification of its mark such that there would be
recognition among
Internet users that the mark “VVG” identifies goods or
services unique to Complainant.”)[2]
After
a basic electronic search in the website of the United States Patent and
Trademark Office (<uspto.gov>) , the Panel has
found more than 350
trademarks either registered or applied for registration, including the word
appliance. It has been noted that
the word appliance is not registered alone.
Also,
the Panel wishes to clarify to the Respondent that the fact that the domain
names <appliance.net> and <appliance.org>
are owned by companies
different than the Complainant is not of importance. Considering that the
Complainant is a commercial company,
it is obvious that it registers its domain
names under the “.com” suffix. Had the Complainant been an Internet provider or
a Non-Governmental
Organization, it would be expected that it registered its
domain names under the “.net” or “.org” suffixes. However, this is not
the case
and Complainant is not expected to have its domain name registered under other
extensions rather than the “.com” one.
As
a generic term, the “appliance” word is of common use and the Complainant can
not contend to have exclusive rights over it, since
it can be freely used by
anyone involved in the business of appliances. (see Efutures.Com LLC v. Cannon
Trading Company Inc.)[3]
As
a consequence, the Panel finds that the Complainant does not have trademark
rights over the word “Appliance” and then the Complainant
has failed to meet
the requirements of paragraph 4(a) (i)
of the STOP Policy.
Complainant states that Respondent lacks
of any right or legitimate interest over the domain name <appliance.biz>. According to paragraph 4 (c) of the STOP
Policy, Respondent shall demonstrate its rights or legitimate interests to the
domain name
in particular but not limited to the following:
i.
Proving
that he is the owner or beneficiary of a trade or service mark that is identical
to the domain name; or
ii.
Proving
that before any notice of the dispute, he used or made demonstrable
preparations to use the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
iii. Proving that he has been commonly known
by the domain name, even if he has acquired no trademark or service mark
rights.
In the present case, the Panel has found
that the word “appliance”, included in the domain name <appliance.biz> is a generic term when used in connection
with different types of appliances. Consequently, it is a term that can be used
without
limitation by everyone involved in the business of appliances.
The Panel considers that the sole
connection with the business of such devices grants a person the legitimate
interest to use the
word “appliance” to identify its products or services, and
neither the Complainant nor the Respondent can contend that they have
an
exclusive right over such word excluding all the other participants in the same
area of commerce.
Respondent states in its response that it
registered the domain name <appliance.biz>
with the intention to use it in connection with its business of selling used
cars. Therefore, Respondent has shown that the he registered
the domain name
with the purpose of using it in connection with a bona fide offering of goods
or services. Additionally, Respondent
has stated that he is willing to take all
the precautions required to avoid any risk of confusion in the public with the
domain name
<appliance.com>, owned by Complainant.
Although Respondent has not shown any
evidence to demonstrate the statement, regarding his business of selling used
cars, the Panel
considers that in the STOP cases the required burden of proof
is low and the Respondent’s allegation should be accepted as evidence,
moreover
since it was not contested by the Complainant. Taking into account that the
commercialization of used cars could be a business
related to appliances (i.e.
selling appliances for used cars), and that Respondent does not have the
intention of misleading users
to his domain name, Respondent has a legitimate
interest in the domain name <appliance.biz>,
and can not be excluded by the Complainant from using it as planned by
Respondent.
It is important to note that, according
to the Respondent, the domain name <appliance.biz>
has not been used due to the fact that it is locked by the Registrar, Neulevel,
as a result of the commencement of the present proceeding.
Notwithstanding,
Respondent has represented that he will use the domain name in connection with
a bona fide offering of goods or
services once it is allowed to do so. The
Panel finds that under the STOP Policy it is very common that the domain names
subject
of the controversies had not been used by its owners due to the
particularities of the proceeding. In fact, many of the domain names
subject to
STOP proceedings do not get to become active before the commencement of the
proceeding. However, in the present case the
Respondent has made a
representation that he will use the domain name once the controversy is
concluded in his favor for a bona fide
offering of goods or services. This
representation will suffice for the Panel to conclude that the Respondent has
legitimate rights
over the domain name <appliance.biz>.
Finally, the Panel wishes to remind that
the “.biz” extension was created with the purpose of enlarging the
possibilities of the Internet
when related to commercial business, due to the
saturation of the “.com” extension. When related to generic terms, which
registration
is not forbidden in the field of domain names, it is clear that
since no one can contend to have exclusive rights over the term,
anyone with
legitimate interest over the name is entitled to register it. It would then be
useless to contend that the owner of the
registration over the “.com” domain
name has a superior right over the “.biz” domain. Then, if Complainant intended
to use this argument
in any manner, it is hereby denied.
Therefore, the Panel finds that the
Respondent has legitimate interests over the domain name <appliance.biz>.
Since the Panel has found that the domain
name <appliance.biz> is not
identical to a trademark over which the Complainant has rights and that
Respondent has legitimate interests over the domain
name, it would not be
necessary to study if the Respondent has acted in bad faith, as stated in the
Complaint. However, the Panel wishes to
make the following comments with regard to this issue.
Complainant contends that Respondent has
registered the domain name <appliance.biz>
in bad faith. Complainant states that Respondent is known as a reseller of
domain names and in the absence of any demonstrable legitimate
interest over
the domain name, it can be concluded that it registered the domain name in bad
faith with the sole purpose of reselling
it to Complainant or its competitors.
Notwithstanding, Complainant ignored that
it was its burden to demonstrate the existence of bad faith in the part of
Respondent.
Respondent, however, clarified the nature
of his activities and his relationship with the registrar RGnames, which would
have caused
the impression in Complainant that Respondent was both a registrar
and a reseller of domain names.
The Panel finds that Complainant failed
to meet its burden of proof regarding the bad faith of Respondent and also
finds acceptable
the explanations given by Respondent with respect to the
purpose of the registration of the domain name <appliance.biz>. Consequently, the Panel finds that the
Respondent has neither registered nor used the domain name <appliance.biz> in bad faith.
In accordance with STOP Rule 1, Reverse
Domain Name Hijacking means using the Policy in bad faith to attempt to deprive
a registered
domain name holder of a domain name.
The Panel notes that the Complainant did
not demonstrate its rights in the disputed domain name. The Panel also notes that Complainant must
have been aware of the fact that the word “Appliance” is a generic term in the
business
of appliances, which makes it impossible to prevent others from using
such term in connection with the same business. Based on this, the Panel believes it appropriate to issue a
finding that the Complainant has attempted reverse domain name hijacking.
(see Aspen Grove, Inc. v. Aspen Grove[4]).
DECISION
Complainant’s Complaint is hereby dismissed.
Subsequent challenges to this domain name, as against the Respondent, under the
STOP Policy shall not be permitted against this domain name.
Fernando Triana, Panelist
Dated: July 9, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1091.html