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Generic Top Level Domain Name (gTLD) Decisions |
Gehl Company v. Kaffer Enterprises
Claim Number: FA0204000110776
PARTIES
Complainant
is Gehl Company, West Bend, WI
(“Complainant”) represented by Michael
Mulcahy. Respondent is Kaffer Enterprises, San Diego, CA
(“Respondent”).
The
domain name at issue is <mustang.biz>,
registered with Intercosmos Media Group,
Inc.
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.
Daniel
B. Banks, 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 23, 2002; the Forum
received a hard copy of the Complaint on
April 23, 2002.
On
April 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 13,
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 18, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Daniel B. Banks, Jr.,
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant:
Complainant is the parent company of
Mustang Manufacturing Co., Inc. It has
used the MUSTANG mark in commerce in relation of its front-end loaders for
materials since 1966. Complainant owns
registered trademarks for "MUSTANG" in the United States and twelve
other countries. Attached to the
Complaint are documents evidencing the trademark registrations of Complainant.
Complainant contends that the disputed
domain name <mustang.biz> is
identical to the MUSTANG trademarks that are listed in the Complaint. Complainant also contends that the
Respondent does not own a trademark incorporating the domain name, has no
business interests associated
with the domain name, nor is it commonly known by
the domain name.
Complainant alleges that the domain name
should be considered as having been registered or used in bad faith in that
Respondent has
registered the domain name in order to prevent Complainant from
reflecting the mark in a corresponding domain name.
B.
Respondent:
Complainant's mark,
"MUSTANG", is a common word found in various dictionaries and is not
exclusive or unique to Complainant.
Complainant does not own <mustang.com>, <mustang.net>,
<mustang.org>, <mustang.info> or <mustang.us>.
Those domain
names are registered by other entities.
The use of the domain name mustang.biz is unlikely to cause confusion
with Complainant's mark.
Respondent has been involved in the
offering of parts and goods for or relating to Ford Mustang vehicles since
1996. Restoring, collecting,
purchasing, trading and selling Ford Mustang vehicles, parts and related goods
has been a hobby of the Respondent's
family for many years. The disputed domain name was registered for
the purposes of conducting legitimate business online in relation to Ford
Mustang.
Respondent made a legitimate and
good faith attempt to create a Limited Liability Company in the State of
California for the purpose
of conducting e-commerce in preparation for the
completion of the web site <mustang.biz>. Before the Complaint was filed, an
accounting advisor, Mary Lou Lamanna, was consulted on numerous occasions
regarding the forthcoming
<mustang.biz>
web site and the status of Kaffer Enterprises.
The disputed domain name was registered
for the purposes outlined above and no company, including Complainant or a
competitor of Complainant,
has been contacted with an offer to sell the domain
name. Respondent's business will not be
in direct or indirect competition with Complainant nor will the content be
likely to cause confusion
with Complainant.
1 - The domain name is identical to
Complainant's registered trademark "MUSTANG".
2 - The Respondent has rights or
legitimate interests in respect of the domain name.
3 - The domain name was not registered or
being used in bad faith.
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 has rights and
legitimate interests in the mark "MUSTANG". This is demonstrated by the numerous trademark registrations
listed in the Complaint and attachments.
A Respondent in a STOP proceeding may
demonstrate its rights or interests in a disputed domain name by proving its
use or demonstrable
preparations to use the domain for a bona fide offering of
goods or services. STOP Policy 4(c)(ii). Respondent has demonstrated rights or
legitimate interests in the disputed domain in that prior to any notice to the
Respondent of
the dispute, Respondent had made demonstrable preparations to use
the domain name for a bona fide offering of goods or services. This is evidenced by Respondents activity,
since 1996, in restoring, collecting, purchasing, trading and selling Ford
Mustang vehicles,
parts and goods relating to vehicles produced by Ford Motor
Company under the model name MUSTANG and by Respondent's attempt to incorporate
in California. Also, Respondent
conferred with an accounting advisor on numerous occasions prior to this
dispute.
Under STOP Policy ¶¶ 4(b)(i),(ii),(iii),
and (iv), there are four examples of circumstances that, if proven, will
satisfy the bad
faith requirement of STOP Policy 4(a)(iii). Those are (1) the Respondent registered the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the
name to Complainant or its competitor for valuable
consideration in excess of Respondent's out-of-pocket costs directly related to
the domain name; (2) by showing that Respondent registered the domain name for
the purpose of preventing Complainant from registering
a domain name that
reflect its mark; (3) by showing that Respondent registered the domain name
primarily for the purpose of disrupting
the business of a competitor; and (4)
that Respondent, by using the domain name, has intentionally attempted to
attract, for commercial
gain, Internet users to its website or other on-line
location by creating a likelihood of confusion with the Complainant's mark as
to the source, sponsorship, affiliation, or endorsement of the website or
location or of a product or service on the website or location.
In this case, there is absolutely no
evidence to support a finding that any of the above circumstances exist. The only evidence offered by Complainant are
attachments reflecting registrations of the trademark "MUSTANG". Respondent has offered evidence as to its
legitimate interest in the Mustang model vehicle of Ford Motor Company and its
offering
of products and services related to that vehicle prior to notice of
this dispute. Additionally, Complainant
is not the owner of any of the other gTLD variations of this be domain
name. In fact, all other gTLD domain
names are registered to other entities than the Complainant.
DECISION
Having
concluded that the Respondent has legitimate rights and interests in the
disputed domain name and that Respondent did not register
or use the disputed
domain name in bad faith, it is determined that this Complaint is dismissed
and that subsequent challenges under the STOP Policy against this domain name shall
not be permitted.
Honorable Daniel B. Banks, Jr., (Ret.),
Panelist
Dated: July 1, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1129.html