|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Shaker Computer & Management Services
Inc. v. Lin Zan Song
Claim Number: FA0204000112472
PARTIES
Complainant
is Shaker Computer & Management
Services Inc., Latham, NY, USA (“Complainant”) represented by Kimber England. Respondent is Lin Zan Song, Wenzhou Zhejiang, CHINA (“Respondent”).
The
domain name at issue is <coins.biz>,
registered with Xin Net Corp.
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.
James
A. Carmody, 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 10, 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 4, 2002.
On July 10, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Carmody, Esq., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
alleges that it holds a USPTO registration for COINS in Class 38 for goods and
services in computer programs and user
manuals for use in the construction
industry and that mark is identical to <coins.biz>, the domain
name at issue. Further, Complainant
says that Respondent has no rights or legitimate interests in the domain name
at issue and that, since Respondent
has registered 152 domains to date, it
registered the domain name at issue in bad faith for the purpose of selling or
renting it.
B.
Respondent
Respondent
alleges, by implication, that Complainant can have no rights in COINS because
it is generic. Further, Respondent
alleges that there is no evidence that it registered the domain name at issue
primarily for the purpose of selling
or renting it to Complainant or to a
competitor of Complainant and that it has plans to use the site for exchange of
coins and no
activity competitive with Complainant’s Class 38 use. Accordingly, Respondent claims to have
legitimate interests in the name and NOT be in bad faith.
Respondent
is not known commonly as “Coins”; it has not begun any activity under that
name; and it does not hold any common law or
registered trademark rights in the
name. Unspecific and unsupported plans of Respondent to one day host a coin
exchange site with
the domain name are insufficient evidence of rights or
legitimate interests. Respondent’s “unsupported, self-serving allegations
alone
are insufficient to establish that [the] Respondent has rights or legitimate
interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962
(Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she
registered the domain name <foxstudios.biz>
in order to get a website
address for her planned dance studios, without evidentiary support, was
insufficient to establish that
she had rights or interests in respect to the
domain name at issue).
Respondent has one hundred and fifty two
domain name registrations and this fact, together with the registration of
someone else’s
registered trademark as a domain name, and the lack of a current
use or articulated plan for the domain, suggest that Respondent
registered the
domain name at issue in bad faith with the intention to sell to Complainant or
a competitor of Complainant. Where
it is clear that the Respondent’s only
interest in the name is to sell it, bad faith may be found. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO
Oct. 26, 2000) (finding that, by identifying itself as “Domain For Sale VMI” in
its registration information, the
Respondent made clear its intent to sell the
domain name for consideration in excess of its out-of-pocket costs).
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
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.
While
not unique, this case involves the unusual feature of Complainant’s use of an otherwise
generic term, “coins,” in an unusual
way to uniquely identify computer software
which would otherwise have no public association with coins in the generic sense. Obviously this unusual use is why the
Complainant was given registration of the mark by the USPTO. On the other hand,
were Respondent
to be allowed to establish and maintain its <coins.biz> site, for the
articulated future purpose of coins exchange, only a generic use of the name
would be employed and, though there might
be no confusion involved,
Complainant’s registered trademark rights would be infringed. This brings into clear question the issue as
to whether a trademark registrant of an otherwise generic mark may successfully
challenge
the domain name registration of that mark who seeks generic use. It
would seem that an item by item finding
under the STOP Policy should be made with any individual case adjustments
relegated to the courts. This Panel
will not presume to be more wizened than the USPTO in the initial analysis. I,
accordingly find that Complainant has rights
in the COINS mark which has
enjoyed registration by the USPTO since 1986 for Class 38, Computer programs
and user manuals. The domain name at
issue is identical.
Accordingly I find that Paragraph
4(a)(1) of the STOP Policy has been satisfied.
Complainant,
with demonstrated and registered rights in the COINS mark to identify its goods
and services related to computers, has
alleged and Respondent has failed to
refute in any way, that Respondent has no rights or legitimate interests at
stake. A claimed plan of Respondent to
use the domain name in connection with a coin exchange site one day hence is
not sufficient.
Accordingly
I find that Paragraph 4(a)(2) of the STOP Policy has been satisfied.
Based
on the factors articulated in the findings, the Panel finds that the domain
name at issue was registered in bad faith.
Accordingly
I find that Paragraph 4(a)(3) of the STOP Policy has been satisfied.
DECISION
It
is the decision of the Panel that the domain name at issue, <coins.biz>, be and hereby is TRANSFERRED
from the Respondent to the Complainant.
Further IP challenges to this domain will NOT be allowed.
James A. Carmody, Esq., Panelist
Dated: July 12, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1134.html