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Generic Top Level Domain Name (gTLD) Decisions |
National Business Furniture v. Tigre
Claim Number: FA0204000112586
PARTIES
Complainant
is National Business Furniture,
Milwaukee, WI (“Complainant”), represented by Kent Anderson. Respondent
is Tigre, Yuma, AZ (“Respondent”)
represented by Pete Erlenbach.
The
domain name at issue is <chairs.biz>,
registered with BB Online UK Limited.
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.
Tyrus
R. Atkinson, Jr., 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 26, 2002.
On
May 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 10,
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 29, 2002.
On June 26, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr. as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is the largest direct marketer of office furniture through a catalog and offers
the largest selection of the product described
in its domain names to hundreds of
thousands of small businesses as well as Fortune 500 companies.
Complainant
operates six separate catalogs and seven separate online commerce sites, all of
which provide the product indicated in
the domain names.
Complainant
owns the US federal trademark application for FURNITUREONLINE.COM, for use in
connection with “online retail store services
featuring office furniture and
accessories; home furniture and accessories.”
This mark was first used in commerce on July 1999.
Complainant
owns several United States federal trademark applications for its trademark
OFFICEFURNITURE.COM. This mark was
first used in commerce on December 1999.
It
is the belief of Complainant that the domain name <CHAIRS.BIZ> was registered by Respondent in bad faith. Respondent does not appear to be in the
business that the domain name implies. The Respondent does not demonstrate the
intent to use
the domain name in connection with a bona fide offering of goods
or services. The Respondent does not use the domain name in the
course of any
known business. It is not known whether the Respondent intends to sell the
domain name to the Complainant or its competitors.
B.
Respondent
Respondent
is a small business owner and operator in the City of Yuma, Arizona, licensed
to conduct a Home Occupation Business.
Respondent’s
business is engaged in the limited manufacture, production, and sale, of fine
craftsmanship quality wood products such
as chairs, benches, stools, cabinets,
tables, and picture frames.
Respondent
has a bona fide intention to use the <CHAIRS.BIZ>
domain name to commence WWW commerce to increase sales of one of Respondent’s
unique products.
Respondent
is not engaged in the act of competition with Complainant or its competitors
and has no future intention to do so.
The
word CHAIRS is a generic term that refers to an entire class of products.
Respondent
asserts that prior to receipt of the Complaint, Respondent possessed no prior
knowledge of the existence of Complainant
or its business.
Respondent
asserts that it has not registered the domain name in order to prevent
Complainant from reflecting the mark in a corresponding
domain name.
Respondent
asserts that it has not registered the domain name primarily for the purpose of
disrupting the business of a competitor.
Respondent
asserts that it has no purpose to create a likelihood of confusion with the
Complainant’s mark.
C.
Additional Submissions
None
1. Complainant is a business organization
that sells furniture and related products by means of catalogs and Internet web
sites located
at <FURNITUREONLINE.COM> and <OFFICEFURNITURE.COM>.
2. Complainant contends that it has made
application for trademarks with the United States Patent and Trademark Office
for the words,
FURNITUREONLINE.COM and OFFICEFURNITURE.COM. Complainant does not include copies of these
alleged applications, but since Respondent does not dispute these alleged
applications,
their existence is accepted for the purposes of this proceeding.
3. Complainant alleges that it has used
FURNITUREONLINE.COM and OFFICEFURNITURE.COM in commerce since the year
1999. No evidence is presented to prove
this allegation. Respondent does not
dispute these allegations so the allegations are taken as true.
4. Respondent is a small business owner
allegedly engaged in the manufacture and sale of wood products including
chairs. No evidence is presented to
support this allegation, but Complainant does not dispute the allegation so it
is taken as true.
5. Respondent registered the domain name, <CHAIRS.BIZ>, on March 27, 2002.
6. Complainant has shown no trademark or
service mark in which it has rights that is identical to the domain name, <CHAIRS.BIZ>.
7. Complainant has proved no rights or
legitimate interests in the domain name, <CHAIRS.BIZ>
or the word, CHAIRS.
8. Respondent has proven no rights or legitimate
interests in the domain name, <CHAIRS.BIZ>.
9. Complainant has proved no bad faith
registration or use of the domain name, <CHAIRS.BIZ>,
on part of Respondent.
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
purpose of the Start-up Trademark Opposition Policy and Rules for .BIZ is to
examine the .BIZ domain name “matching the exact
alphanumeric string contained
in the trade or service mark in which the Claimant has rights.” See
Paragraph (1). The domain name must
“identically” match a trade or service mark string. The Policy does not make it clear whether the .BIZ domain name
must be exactly the same as the trademark or service mark, as opposed
to
whether the .BIZ name is merely identical to some part of a trademark or
service mark in which Complainant has rights.
In
comparing the .BIZ and trademark or service marks alleged to be held by
Complainant in this case, the first consideration is to
ignore the generic top
level (“gTLD”) domain indicators. The
indicators, .BIZ and .COM, are irrelevant with determining whether a domain
name and mark are identical. see Princeton Linear Assoc., Inc. v. Copland
o/b/o LAN Solutions Inc., FA102811 (Nat. Arb. Forum Feb. 8, 2001). No characters and symbols that are
impermissible in domain names, such as apostrophes, ampersands, and other
punctuations are to be
considered. see Commercial Investors Realty v. Bank
of New York, FA103040 (Nat. Arb. Forum Feb 18, 2002).
Applying
these rules to the present case what remains is Complainant’s alleged marks,
OFFICEFURNITURE and FURNITUREONLINE to be compared
with the disputed domain
name, CHAIRS, without the .BIZ indicator. Complainant has no registered
trademarks or service marks. It may
have limited common law rights to OFFICEFURNITURE and FURNITUREONLINE. The
fact that Complainant has applied for a trademark or service mark registration
standing alone establishes neither rights or presumptions
that Complainant has
rights or interests in the marks for which application is made. See Bar Code
Discount Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27,
2001).
Complainant
fails to explain how or why the word, CHAIRS, is identical to, similar to, or
related in any way anticipated by the Start-up
Trademark Opposition Policy and
Rules for .BIZ to the only marks advanced by Complainant to be here involved,
OFFICEFURNITURE and
FURNITUREONLINE.
The elementary fact is that the terms are not identical. Nothing can be found in the words OFFICEFURNITURE
and FURNITUREONLINE to suggest in any understandable manner a creation of a
right
or interest in the word, CHAIRS.
The Panel cannot ascertain the reasoning of Complainant in filing the
Complaint generating this domain name dispute.
Complainant fails to reveal its theory in the Complaint.
An
Applicable Dispute is defined in the Policy as one in which the domain name is
identical to a trademark or service mark in which
the Complainant has rights. see
Paragraph 4(a)(i). The Rules
require a Complaint to “Describe, in accordance with the Policy, the grounds on
which the complaint is made including, in
particular, (1) the extent to which
the domain name(s) is/are identical to a trademark or service mark in which
Complainant has rights.”
see Rule 3(c)(ix).
Complainant
failed to comply with the Policy and Rules. “If the Panel concludes that the
dispute is not within the scope of Paragraph
4(a) of the Policy, it shall so
state. see Rule 15(d). The
conclusion is reached in this case that this case is not an applicable dispute
since the domain name and the words in which Complainant
contends it has rights
are not identical within the meaning of the Policy. Complainant proved no
rights in the word CHAIRS or the
domain name, <CHAIRS.BIZ>.
Respondent argues that the word,
CHAIRS, is a generic term that refers to an entire class of products and that
within the purview
of trademark law, the term means a lack of distinctiveness
necessary for the name or mark to be given Federal Trademark Law
protection. Generic marks, Respondent
argues, are marks, which embrace entire classes or products or services, not
all of which emanate from the
same source.
A generic term, Respondent continues, is one, which is commonly used as
a name, or description of a kind of goods and it is generally
accepted that a
generic term is incapable of achieving trade name protection.
Indeed, Respondent argues, the term
CHAIRS is so greatly generic that the term is incapable of being granted
Federal Trademark Law
protection. The
generic term, Chairs, can be, and is, used by any one of thousands of similar
furniture stores across the United States, Respondent
concludes. Respondent
cites several United States District Court cases to support its argument.
Complainant does not address the issue of
whether the disputed domain name is generic or not, nor does Complainant
dispute that the
term, CHAIRS, is a generic term.
The Panel agrees with the undisputed
position of Respondent that the word, CHAIRS, is generic for the purposes of
deciding this dispute. Under
Respondent’s theory, neither Complainant nor Respondent has legitimate rights
or interests in the word, CHAIRS. Respondent offers
no proof to demonstrate
rights to and legitimate interests in the domain name by any of the methods set
out in Paragraph 4(c) of
the Policy.
Without proof of these issues, Respondent cannot be found to have rights
and interests. see Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000). Generally, the first to
register a domain name containing a generic mark should prevail absent bad
faith. see CRS Technology v. Condenet Inc. FA93547 (Nat. Arb. Forum Mar.
28, 2000). A person may register a
common, generic, word on a first come, first served basis as a general rule. see
Zero International Holding GmbH v. Bayonet Services, D2000-0161 (WIPO May
12, 2000).
Complainant makes no attempt either by
proper allegation or exhibit to prove Respondent’s bad faith registration or
use.
DECISION
IT IS THE DECISION OF THIS PANEL THAT THE
COMPLAINT BE DISMISSED AND COMPLAINANT’S DEMAND FOR TRANSFER OF THE DOMAIN
NAME, <CHAIRS.BIZ>,
IS DENIED. IT
IS ALSO FOUND THAT FURTHER CHALLENGES BE PERMITTED ON THE GROUND THE PANEL IS
UNWILLING TO FORECLOSE THE POSSIBILITY THAT A PARTY
MAY BE ABLE, UNDER THE
POLICY AND RULES, TO MAKE OUT AN ADEQUATE CASE TO PREVAIL AS TO THIS DOMAIN
NAME.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 10, 2002.
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URL: http://www.worldlii.org/int/other/GENDND/2002/1096.html