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Generic Top Level Domain Name (gTLD) Decisions |
Stream International Inc. v. dotPartners
LLC
Claim Number: FA0204000112428
PARTIES
Complainant
is Stream International Inc.,
Canton, MA (“Complainant”) represented by Henry
Gitter. Respondent is dotPartners LLC, Livingston, NJ (“Respondent”)
represented by Ari Goldberger, of ESQwire.com.
The
domain name at issue is <stream.biz>,
registered with TLDS, Inc..
The
undersigned, Jacques A. Léger Q.C acting as
Panelist, 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.
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 30, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
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”).
Respondent
never filed an original Response in this proceeding. However, Respondent’s
Additional Submission was received in a timely
matter on June 3, 2002 according
to the Forum’s STOP Supplemental Rule #7.
On June 28, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Jacques A. Léger,
Q.C. as single Panelist.
Transfer
of the domain name from Respondent to Complainant.
Complainant alleges it has been using the mark
STREAM since 1995.
Complainant contends the domain name registered by
Respondent <stream.biz> is identical to its mark.
Complainant contends to have submitted evidence of
three filed applications with the United States Patent and Trademark Office
("USPTO")
covering the STREAM mark (exhibit A).
Complainant contends that its trademark application
for STREAM (No. 74,662504) has been approved for registration.
Complainant contends Respondent has no legitimate
interest in the disputed domain name.
Complainant contends Respondent has made no effort
to carry out any of the actions that the Panel may consider as having acquired
a legitimate interest in the domain name at issue.
Complainant alleges that a search of numerous
business databases and Internet search engines has uncovered no evidence that
Respondent
has been commonly known by the name STREAM.
Complainant alleges that the search also failed to
turn up evidence that Respondent has undertaken any efforts to conduct business
under the <stream.biz>
domain name or the STREAM mark.
Complainant contends that a search of the United
States Patent and Trademark Office records reveals that Respondent has not
applied
to register the STREAM mark in connection with any goods or services.
Complainant contends Respondent has acted in bad
faith in registering <stream.biz>.
Complainant contends a search of the Neulevel
registry revealed that Respondent has registered at least 75 ".biz"
domain
names (exhibit B).
Complainant contends both the number and type of domain names registered demonstrate that
Respondent has no intent to conduct business or identify itself by
the domain
names it seeks to register. Complainant
adds it would be implausible for Respondent to argue that it is interested in
operating more than a handful of businesses
under the domain names that it has
registered.
Complainant contends the obvious intent of
Respondent in registering these domain names is to offer them for sale to the
highest bidder,
to "ransom" them back to their respective trademark
holders.
While there was no submission as an initial
Response, Respondent submitted an additional submission which was accepted by
the Forum.
Respondent contends Complainant does not have a registered trademark for STREAM, but
has merely filed trademark applications for this common word.
Respondent contends
Complainant alleges it has been using the mark since 1995, however it has not
provided any evidence of such trademark
use at all.
Respondent alleges it appears that STREAM is simply a shortened version of
Complainant’s company name, Stream International.
Respondent contends because Complainant does not have a registered trademark for STREAM, nor
has it provided evidence of common law rights to this common word, the
Complaint
must be denied.
Respondent argues that
Complainant has misrepresented the status of its trademark application to this
Panel because while Complainant
has alleged that its trademark application for STREAM (No. 74,662504) has been “approved for registration,” the true current
status as of March 15, 2002 is that “[t]he application was
scheduled to
register but has been withdrawn from that status.”( exhibit 6).
Respondent alleges this
misrepresentation should be looked at with great suspicion by the Panel and
calls into question the entire
Complaint.
Respondent contends ownership of a
trademark by a Respondent is not a prerequisite for having rights or legitimate
interests.
Respondent
contends it has filed for a trademark for MAINSTREAM TV, which is certainly
similar to the Disputed Domain and, at the
very least, lends further support,
to Respondent’s proof of legitimate interest under paragraph 4(c)(ii).
Respondent
alleges it intends to use the Disputed Domain for an Internet based television
broadcasting site, a fact backed up by Respondent’s
trademark application for
MAINSTREAM TV, which has been approved.
Respondent
argues its legitimate interest is not diminished because the <stream.biz>
web site is not yet activated, a problem resulting from the fact that the
Disputed Domain is on hold.
Respondent
contends its burden to establish legitimate interest is very small..
Respondent
contends it has engaged in substantial efforts and expense to develop its
Internet television broadcasting site, even applying
for a trademark.
Respondent
alleges that STREAM is a common word in the dictionary meaning, among other
things, “a steady succession” or
“continuously moving procession.”
Respondent
argues it registered the Disputed Domain because it is short for the common
term “streaming” which, in the context of the
Internet, refers to streaming
media. Streaming media refers to audio,
video and other multimedia, which can be downloaded and viewed by a user in real
time. This term is, thus, appropriate
for Respondent’s Internet television broadcasting site.
Respondent adds
that the common word STREAM is subject to substantial third party use
unaffiliated with Complainant. A search
on the Internet search engine Google.com for the word STREAM without the word
“international” (to exclude references to Complainant,
Stream International)
yielded 2,180,000 web pages unaffiliated with Complainant. There are over one
thousand pending and active trademark
registrations which incorporate STREAM
that are unaffiliated with Complainant.
There are over 2,000 third-party Internet domain names containing the
common word STREAM.
Respondent contends there is no evidence that the
Disputed Domain was registered with the intent to sell it to Complainant, to
disrupt
its business, to prevent it from registering its trademark, or to
confuse consumers.
Respondent contends it is
well-established under the UDRP Policy that, where a trademark is a common term,
as it is here, bad faith can only be proven if there is evidence that
Respondent registered the domain name “specifically to sell to the
Complainant,” or that the “value of [the] domain derived exclusively from the
fame of
[the] trademark.”
Respondent contends the wide third party use of the
word STREAM establishes that the value of the Disputed Domain derives not from
any alleged fame of Complainant’s mark but, rather, from the popularity of this
common word.
Respondent alleges that it certainly never contacted Complainant to offer to sell it the Disputed
Domain, and Complainant did not so much as call Respondent
to inquire what its
plans were for the domain name, or whether it would consider selling it.
Respondent adds that Complainant has
not established that Respondent had ever heard of it when the Disputed Domain
was registered and that without such
knowledge, it is not possible for the
Disputed Domain to have been registered in bad faith.
Respondent contends that since STREAM is a generic
mark, there was no basis to bring this Complaint over a very common word.
Respondent contends
Complainant misrepresented the status of its alleged trademark, stating that
application number 74,662504 “has
been approved for registration,” when in fact
the true status since March 15, 2002 (in existence at the time the Complaint
was filed)
was that the application “was removed from that status.”
Respondent contends
Complainant should be rebuked for misrepresenting the status of its alleged
trademark.
Having reviewed the Complaint and
evidence submitted by the parties, the Panel makes the following findings:
·
The
disputed domain name <stream.biz>
is identical to Complainant's trademark STREAM.
·
Complainant
has not satisfied its burden to prove that it has exclusive rights in the
trademark STREAM.
·
Complainant
has not satisfied its burden to prove that Respondent has no rights or
legitimate interests in the domain name <stream.biz>.
·
Complainant
has not satisfied its burden to prove that Respondent has registered the domain
name <stream.biz> in bad
faith.
·
Respondent
has not satisfied its burden to prove
that the Complaint constituted an abuse of the process so as to constitute
Reverse Domain Name Hijacking.
Introduction
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:
(i)
the domain name is identical to a trademark or service
mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii) 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
may 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.
On
this first issue, the Panel finds that Complainant has not satisfied its burden
in showing that it has (exclusive) rights in the
mark STREAM given the fact that
it has not made satisfactory proof to the existence of its rights other than
merely alleging that
it has been using the mark since 1995.
Complainant
has filed three applications with the United States Patent and Trademark Office
("USPTO") for the STREAM mark
(exhibit A), and has alleged that its
application (No. 74,662504) had been approved for registration. However,
Respondent has shown
that while the application was scheduled to register, it
had been withdrawn from that status; This is supported by the exhibit 6
of the Response. While this evidence is not persuasive as to the exact status
of this
application, Complainant should have attempted to clarify that issue.
In any event, as seen in Business Architecture Group, Inc. v. Reflex
Publishing, Case No. 97051 (Nat. Arb. Forum June 5, 2001), the Panel found
that complainant had no enforceable trademark rights because "[t]he
PTO
has not yet approved the application, therefore no registered trademark has
been registered via registration". The Panel
also cites the decision Warnervision
Entm’t Inc. v. Empire of Carolina Inc., 919 F. Supp. 717 (S.D.N.Y. 1996)
(trademark rights do not accrue to a pending application).
On this second issue, the Panel finds
that Complainant has not satisfied its burden in showing that Respondent does
not have rights
or legitimate interests in the mark STREAM given that there was
no attempt to show evidence on this issue, other than a mere allegation.
Complainant simply contends that Respondent has made no effort to carry out any
of the actions that the Panel may consider as having
acquired a legitimate
interest in the domain name at issue. Complainant says to have based itself on
a search of numerous databases
and Internet search engines to assert that there
is no evidence that Respondent has been commonly known by the name STREAM and
that
there is no evidence that Respondent has undertaken any efforts to conduct
business under the <stream.biz>
domain name or the STREAM mark. This simple allegation does not suffice. There
is no evidence whatsoever of Complainant's contention.
In
addition, Complainant also states that a search of the United States Patent and
Trademark Office records reveals that the Respondent
has not applied to register
the STREAM mark in connection with any goods or services. Even if that was the
case, the absence of an
application is not per say evidence of lack of right or
legitimate interest as trademark rights are acquired through use and not
by a
simple application.
The initial
burden of proof relies squarely on the shoulders of Complainant to show that
Respondent has no rights or legitimate interest
in respect of the domain name.
Once Complainant has at least demonstrated enough indication, then, but only
then does the burden
shift to Respondent's shoulders to rebut or explain.
Otherwise, as in the present case, Respondent needs not to bring forward some
evidence that neutralizes Complainant's contentions.
Complainant
having not proved with concrete evidence Respondent's lack of rights or
legitimate interest in the domain name, Respondent
is in no obligation to
convince the Panel of its rights.
Even
if the burden of proof in this case needs not to be shifted to Respondent,
Respondent nevertheless has presented some elements
to show it has rights or
legitimate interests in the disputed domain name. Prior to the initiation of
this dispute, Respondent has
operated with its affiliated company, Boogie TV
LLC, <Boogie.tv> and <iBoogie.com>, a search engine web and site
network
in which it has invested $1.7 million.
Respondent has indicated it intends to use the Disputed Domain for an
Internet based television broadcasting site, a fact backed up
by Respondent’s
trademark application for MAINSTREAM TV.
This trademark has been filed in connection with the Internet based
television broadcasting business. This is supported by evidence
annexed to the
additional response at exhibits 1 and 2. Because the Disputed Domain is
demonstrably being prepared to be used in
connection with the bona fide
offering of services, Respondent’s legitimate interest is certainly prima facie established.
Having found in favor of Respondent on the previous count,
this element does not necessarily need to be examined. However, in the
case at
hand, the Panel does find that there was no bad faith on the part of Respondent
since Complainant did not even attempt to
present some evidence that would
enable a conclusion of bad faith on the part of Respondent whether in the
registration or use of
the domain name in dispute.
Respondent has asked for a declaration
by the Panel that the Complaint was brought in bad faith and constitutes an
abuse of the administrative
proceeding.
A
claim of Reverse Domain Name Hijacking by Complainant must meet a heavy burden
of proof by Respondent, i.e. there must be some evidence
at least that the
Complaint or the process was brought in bad faith or constituted an abuse of
the process. See Teranet Land Info. Serv. Inc. v. Verio, Inc.,
D2000-1123 (WIPO Jan. 25, 2001) and Church in Houston v. Moran,
D2001-0683 (WIPO Aug. 2, 2002) noting that a finding of reverse domain name
hijacking requires bad faith on Complainant's part;
bad faith was not proven in
these decisions because Complainant did not know and should not have known that
one of the three elements
in the Policy 4(a) was absent. In the case at hand,
while Respondent has shown that the acceptance status had been withdrawn, it
did not go as far as proving that the application as such had been abandoned.
While Complainant might have been somewhat careless
in not verifying the exact
status of its application in making the application, that is not necessarily
proof of bad faith on his
part as such records are by their nature public
records. The Panel refers to its finding in Prudential Assurance Co. v.
Davis, FA 112447 (Nat. Arb. Forum July 8, 2002), in which it adopted the
finding of Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited,
FA 102972 (Nat. Arb. Forum Feb. 23, 2002) where "the Panel considered the
Complaint to have been misconceived rather than brought
in bad faith."
DECISION
For the
foregoing reasons, the Panel concludes that :
-
While the domain name registered by the Respondent is identical to the
trademark, Complainant has not satisfactorily met its burden
to prove that it
owned exclusive rights;
-
The Complainant has failed to show that Respondent has no rights or
legitimate interests in respect of the domain name; and
-
The Complainant has failed to show that the domain name has been
registered or used by the Respondent in bad faith.
The Complainant
having failed to meet its burden on the three elements, which need to be proven
cumulatively under the STOP Policy,
accordingly, the Panel dismisses the Complaint.
There are no
further IP claims pending against this domain name under the STOP Policy.
Jacques A. Léger, Q.C., Panelist
Dated: July 12, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1140.html