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Generic Top Level Domain Name (gTLD) Decisions |
AMR Corporation v. Hiran Costa Verges
Claim Number: FA0204000112519
PARTIES
Complainant
is AMR Corporation, Dallas, TX, USA
(“Complainant”) represented by Kay Lyn
Schwartz, of Gardere Wynne-Sewell,
LLP. Respondent is Mr. Hiran C Verges, Santiago Rm, CHILE
(“Respondent”).
The
domain name at issue is <amr.biz>,
registered with Dotster.
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.
Alan L. Limbury, 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 27, 2002; the Forum
received a hard copy of the Complaint on
May 2, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 30,
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 30, 2002.
On July 1, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Alan L. Limbury Esq.
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The domain name is identical or
confusingly similar to a service mark and trade name in which Complainant has
rights. Complainant owns a service mark
for “AMR and design” used in connection with business management consulting
services in the aviation
and transportation industries. “AMR” is also the trade name for
Complainant. The service mark and trade name are collectively referred to as the
“AMR mark”. Respondent’s domain name is
<amr.biz>. Respondent’s domain name is certainly
confusingly similar to Complainant’s AMR mark.
Respondent
has no rights or legitimate interests in respect of the domain name.
Complainant
has acquired a nationwide reputation for quality goods and services and has
accumulated substantial public goodwill.
In the course of its business, Complainant has acquired extensive rights
in numerous trade names, trademarks, and service marks, including
the AMR mark. Complainant has continuously used the AMR
mark since at least as early as 1990 in connection with business management
consulting services
in the aviation and transportation industries.
Upon
information and belief, there is no evidence of Respondent’s use of, or
demonstrable preparation to use, the domain name or a
name corresponding to the
domain name in connection with a bona fide offering of goods or services. Respondent is not authorized to use
Complainant’s AMR mark. Upon
information and belief, Respondent (as an individual, business, or other organization)
has never been commonly known by the domain
name at issue and has no legitimate
non-commercial or fair use of the domain name.
Upon information and belief, the domain name at issue is not, nor could
it be contended to be, the nickname of Respondent or in any
other way
identified with or related to a legitimate interest of Respondent.
The
domain name was registered and is being used in bad faith. The domain name was
registered or acquired for a primary purpose of
intentionally attempting to attract,
for commercial gain, Internet users to Respondent’s web site or other on-line
locations.
Respondent
was on notice as to the existence of Complainant's AMR mark when it registered <amr.biz>. Actual or constructive knowledge of a
commonly known mark at the time of registration is evidence of bad faith.
In
addition, the registration by Respondent of the domain name prevents
Complainant, as owner of the AMR mark, from reflecting the
mark in the domain
name at issue.
Respondent’s
continuing conduct trades on the value of, and interferes with, Complainant’s
rights to use its mark in commerce.
B.
Respondent
By
asserting that the domain name is confusingly similar to the AMR mark,
Complainant concedes the mark is not identical to the domain
name. The mark is
not distinctive, being 3 common letters of the English alphabet and
"AMR" has substantial third party
use.
Under
STOP, a Complaint may not be filed unless the domain name in dispute
identically matches the exact alphanumeric string contained
in a trademark or
service mark in which the Complainant has rights and for which the Complainant
has registered an Intellectual Property
(IP) claim form: see STOP paragraph 1;
the IP Claim Service Terms of Use, paragraphs 1 and 4 and the definitions of
“Claimant” and
“Complainant” in paragraph 1 of the STOP Rules. Accordingly,
every STOP proceeding, properly brought, should necessarily involve
a disputed
domain name that (apart from the “. biz” GTLD, which must be disregarded) is
strictly identical to a trademark or service
mark in which a Complainant
asserts rights.
The domain name <amr.biz>
was registered by Respondent in virtue of the significance of the acronym,
which in Respondent's language (Spanish) stands for Acceso
Multimedial Remoto,
namely Remote Multimedia Access (in English). This project has taken over two
years in preparation and is intended
to serve as a portal that sells multimedia
content to companies that use remote access technology to serve their customers
with multimedia
content.
Bad faith
Respondent denies registration or use in bad faith.
Reverse domain name hijacking
Complainant knew of the clear lack of
Respondent’s bad faith registration and or use but nevertheless brought the
Complaint in bad
faith.
Complainant has not established all the
elements required to entitle it to relief under the STOP.
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 requires Complainant to 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 Complainant has rights; and
(2) 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.
The
STOP is concerned with trademarks and service marks as such, not with trade
names. By applying the compendious description “the
AMR mark” to both its
service mark and its trade name, Complainant renders impenetrably obscure its
claim to have “continuously used the AMR mark since at least as early as
1990 in connection with business management consulting services…”. In any event, Complainant provides no
evidence to prove this claim, whatever it means.
Annex 1 to the Complaint is a copy of Complainant’s U.S.
Service Mark Registration No. 1,850,845, registered August 23, 1994. The
mark
is a design incorporating the initials AMR superimposed on a depiction of a
bird, most probably an eagle, in International Class
35 for business management
consulting services in the aviation and transportation industries.
Complainant has established that it has rights in the
AMR design mark.
Contrary to Respondent’s submission, Complainant
asserted and did not concede absence of identity. However Complainant also claimed confusing similarity, a concept
beyond the scope of the STOP.
This
case raises the need to reconcile STOP paragraph 4(a)(i), which requires a
Complainant to prove that the domain name is identical
to Complainant’s mark,
and STOP paragraph 1, which requires a Complainant, before filing its STOP
Complaint, to file an IP Claim
Form for a .biz domain name matching “the
exact alphanumeric string contained in” the mark.
The
reference to the exact alphanumeric string contained in the mark
recognizes that trademarks and service marks commonly include design elements
as well as alphanumeric ones and that there
is no scope for domain names to do
the same.
It
is often said in these cases that:
“Under
the STOP proceedings, a STOP Complaint may be filed only 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”.
This
is not entirely accurate. A STOP Complaint may be filed only when the domain
name in dispute is identical [save for the inconsequential
.biz gTLD] to the
exact alphanumeric string contained in the trademark or service mark for which
a Complainant has registered an
Intellectual Property (IP) claim form. The
question whether the domain name is identical to the mark must be determined in
the proceedings.
Of course, the vast majority of marks are word marks and in
those cases it is correct to say that the STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights. Where a mark contains a design
or logo in addition to an alphanumeric string, the Panel must decide whether
the domain name is identical
to the mark as a whole, taking the alphanumeric
and design or logo elements into account.
In
Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum), this Panelist
said:
“… every STOP proceeding, properly brought, should
necessarily involve a disputed domain name that (apart from the “.biz” gTLD,
which
must be disregarded) is strictly identical to a trademark or
service mark in which a Complainant asserts rights” [emphasis added].
Given
the design element of Complainant’s mark, it cannot be said the domain name is
strictly identical to the AMR design mark.
However, some .biz cases have found domain names to be identical to
stylized and design marks: see for example SDMO Indus. v. Coldwell Banker
Burnet, DBIZ2001-00016 (WIPO) (trademark and design showing the word “SDMO”
and a logo with two bars and a stylized “S” near to its name.
Finding: “This
stylised element does however not influence the impression that the very
trademark is SDMO”). The “strictly identical” test suggested in Commonwealth
Bank v. Rauch may not be appropriate for design or logo mark cases.
Applying
the traditional UDRP “virtual or substantial identity” test, a prominent
feature of Complainant’s mark is the combination
of letters AMR. However the eagle’s wings, body, head, tail
and one talon, over which the letter M is superimposed but which protrude
significantly
above and beneath that letter, appear to the Panel to be an
almost equally prominent part of the mark.
Not without some hesitation and recognizing that views can differ on
this issue, which is essentially one of personal judgment, the
Panel finds the
domain name is not identical to Complainant’s mark.
Complainant
has not established this element of its case.
For
the purpose of determining this Complaint it is unnecessary, having regard to
the previous finding, to consider whether Complainant
has demonstrated absence
of rights or legitimate interests in the disputed domain name on the part of
Respondent.
For
the purpose of determining whether subsequent challenges may be made under the
STOP against the disputed domain name, it is necessary
to consider whether
Respondent has demonstrated any such rights or interests. The Panel finds
Respondent has not done so because
Respondent has produced no evidence in
support of his claim to having spent over 2 years in preparation for his Acceso
Multimedial
Remoto project.
It is unnecessary to determine this
issue.
Reverse domain name hijacking
Rule 1 defines reverse domain name
hijacking as “using the Policy in bad faith to attempt to deprive a registered
domain-name holder
of a domain name.” See also Rule 15(d). To prevail on
such a claim, Respondent must show either that Complainant knew of Respondent’s
unassailable right or legitimate interest
in the disputed domain name or the
clear lack of bad faith registration and use, and nevertheless brought the
Complaint in bad faith:
Sydney Opera
House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO, Oct. 31, 2000) and Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO) or that the Complaint was
brought in knowing disregard of the likelihood that Respondent possessed
legitimate interests: Smart Design LLC v.
Hughes, D2000‑0993 (WIPO).
To that list of circumstances might be
added that a Complainant was aware that the domain name was clearly not
identical (nor, in
UDRP cases, confusingly similar) to its mark and
nevertheless brought the Complaint in bad faith.
Here the issue of identity has been a
difficult one. In relation to that issue Complainant was unarguably entitled to
file its IP
claim form and its STOP Complaint. Respondent has not demonstrated
rights or legitimate interests in the disputed domain name and
it has been
unnecessary to decide the issue of bad faith. Accordingly, none of the
circumstances justifying a finding of reverse
domain name hijacking has been
established.
DECISION
Pursuant to Paragraph 15(d) of the Rules,
the Panel concludes that the dispute is not within the scope of the STOP. The
Complaint
is dismissed. Since Respondent has not demonstrated rights or
interests in the disputed domain name, subsequent challenges under the STOP
against
the disputed domain name (i.e. other than by Complainant) shall
be permitted.
Alan L. Limbury Esq., Panelist
Dated: July 11, 2002.
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URL: http://www.worldlii.org/int/other/GENDND/2002/1115.html