START-UP TRADEMARK OPPOSITION POLICY

DECISION

Opus Corporation v. Renald Otto

Claim Number: FA0204000112436

PARTIES

Complainant is Opus Corporation, Minnetonka, MN, USA(“Complainant”) represented by Dan F. Nicol..  Respondent is Renald Otto, Berlin, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <opus.biz>, registered with Schlund & Partner AG.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.

James Alan Crary 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 27, 2002.

On May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 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 13, 2002.

On June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a licensee under a license agreement with the owner of the servicemark OPUS and other trademarks in connection with Complainant’s real estate leasing, purchasing, sales, and management business as well as its residential, governmental, and industrial building design, construction, and repair business. The mark has been used in commerce in relation to its businesses since 1983. Complainant is a licensee and affiliated with the owner of U. S. trademark numbers 1,262,651 and 2,520,075.

It was asserted that Respondent had no right or legitimate interest in <opus.biz>. A search of the German patent and trademark offices did not reveal a trademark or servicemark filing for the word “opus” registered to Respondent.

It was believed that Respondent was not presently using the name “opus” commercially and it was not commonly known by that name nor did it own a servicemark or trademark identical to the domain name.

Bad faith was alleged.

The purpose of the .biz TLD domain is for the conduct of business. A WHOIS .biz name search indicated that Respondent is an individual, who did not appear to operate under a business name.

There was no evidence to indicate Respondent has any business interest associated with the name Opus. An Internet search located web pages designed and copyrighted by Respondent which led to the conclusion that Respondent’s business was web design. There was no mention of the name Opus on any of these copyrighted web pages.

It could be inferred from the circumstances that Respondent registered the <opus.biz> in order to prevent Complainant from using its OPUS mark in a corresponding domain name. It was asserted that <opus.biz> is identical to Complainant’s OPUS mark and because of this any intended use by Respondent of the <opus.biz> domain would cause a likelihood of confusion by Internet users as to the source and affiliation of the domain.

B. Respondent

The word opus is an active part of the English language. It was listed in the Oxford English Dictionary as of 1809. Opus is an active part of the German language since the early 18^th century according to the “Duden”. It was asserted that many European languages contain the word “OPUS” as a generic word meaning “work”.

As a generic word it was not eligible for trademark registration. Any rights from an improper trademark registration were weak if not nonexistent.

It was asserted that the German patent and trademark offices reject any application for a trademark on a generic word and that registration of a generic word is illegal under European and “U. S.-American law”.

Respondent denied bad faith asserting that he registered the domain name <opus.biz> to conduct business. Respondent’s business interest in the word OPUS would be disclosed upon request. It was asserted that Respondent’s business was not web design.

Respondent denied that his use of the domain name <opus.biz> would cause confusion by Internet users since he and his company always published detailed contact information on their web pages so as to avoid confusion by Internet users about the source or affiliation of his web pages.

FINDINGS

1. Complainant is a license of the owner of two U. S. Service Marks (Registration Nos. 1,267,651 and 2,520,075).

2. Complainant or its affiliated companies have used the OPUS mark in commerce in relation to its various real estate related businesses since 1983.

3. Respondent registered the <opus.biz> domain name, but has yet to develop a use for it.

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.

Complainant’s Rights in the Mark

It was the conclusion of the Panel that Complainant established rights in the OPUS mark. The service mark is registered with the United States Patent and Trademark Office. Complainant is affiliated with and a licensee of the service mark owner.

Respondent’s <opus.biz> domain name contains Complainant’s entire OPUS mark. There is nothing in Respondent’s domain name that adds anything new to Complainant’s mark except the inconsequential addition of “.biz”. Therefore, the Respondent’s domain name is identical to Complainant’s OPUS mark.

Accordingly, the Panel finds that the STOP Policy 4(a)(i) has been satisfied.

Respondent’s Rights or Legitimate Interests

Respondent did not assert that it was the owner or beneficiary of a trade or servicemark that is identical to the domain name. Respondent maintained that a trademark registration was not available for “OPUS” since it was a generic word and that the registration of a generic word is “illegal” under European and “U. S.-American law”.

The Respondent failed to set forth facts sufficient to establish rights or legitimate interests under STOP  Policy  4(c) (ii). It was asserted that the domain name registration of “OPUS” was for a business purpose but Respondent failed to disclose what that purpose would be except upon request. This was insufficient to establish use or demonstrable preparations for use of the domain name in connection with a bona fide offering of goods or services. Respondent’s unsupported allegations alone were insufficient to establish that Respondent’s had rights or legitimate interests in respect to the domain name at issue. Twentieth Century Fox Film Corp. v. Benstein, FA102962 (Nat. Arb. Forum Feb. 27, 2002). In that case there were allegations as to the nature of the registration. There was no evidentiary support that Respondent actually planned dance studios.

Respondent admitted in the Response that it is known by the business name “Otto & Partner GbR, Berlin”. The Panel therefore concluded that the Respondent was not commonly known by the domain name. [STOP Policy 4 (c ) (iii)]

Therefore the Panel concluded the Respondent failed to establish rights or legitimate interests in the domain name.

Registration or Use in Bad Faith

The Rules and Policy of the STOP process differ from UDRP claims in a very significant and fundamental way. This is because IP claims could be registered in advance of the .biz registration process by a trademark owner. The registrant is notified of the potential for trademark infringement before being allowed to proceed with the .biz registration. This has the effect of the putting the Respondent on notice that there are known trademarks using the words in the domain name that belong to a direct or potential competitor at the time of the registration of the domain .biz.  See Gene Logic Inc. v. Bock, FA103042 (Nat. Arb. Forum Mar. 4, 2002).

The Panel concluded that there was circumstantial evidence of bad faith registration for the purpose preventing the Complainant, the licensee, of the trademark holder from reflecting that mark in a corresponding domain name. Had the Respondent made a showing that he was actually using the domain name in a business or that he had made significant preparations for use prior to notice of the dispute this Panel might have been able to reach a different conclusion but Respondent’s bare assertion that it had a business purpose coupled with failure to in anyway disclose the purpose or provide evidence of a legitimate purpose suggested to the Panel that it had no bona fide purpose in the registration. See Valspar Sourcing, Inc. v. TIGRE, FA112596 (Nat. Arb. Forum, June 4, 2002).

The Panel concluded Respondent had notice of the OPUS mark and constructive notice of Complainant’s rights in relation to the OPUS mark. Respondent does not deny that it had notice of the mark under the STOP process.

DECISION

The Panel found for the Complainant and against the Respondent. In accordance with paragraphs 10 and 15 of the STOP Policy it is directed that the domain name <opus.biz> be transferred to the Complainant.  Further challenges against this domain name shall not be permitted under the STOP Policy.

James Alan Crary, Panelist
Dated: July 11, 2002

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