START-UP TRADEMARK OPPOSITION POLICY

DECISION

Leap Wireless International, Inc. v. Personal Domain

Claim Number: FA0205000114366

PARTIES

Complainant is Leap Wireless International, Inc., San Diego, CA  (“Complainant”) represented by Mark T. Lee.   Respondent is Personal Domain, Manly Vale, AUSTRALIA  (“Respondent”) represented by Greg Horner.

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leap.biz>,  registered with Abacus America, Inc. dba Names4ever.com.

PANEL

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.

            Judge Richard B. Wickersham, (Ret.) 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 May 20, 2002; the Forum received a hard copy of the Complaint on May 24, 2002.

On June 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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 Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on June 14, 2002.

On July 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

            “The Complaint is based on the following factual and legal grounds:

[a.]       Similarity of Complainant’s Trademark and the Domain Name in Dispute (STOP Rule 3(c)(ix)(1); STOP ¶ 4(a)(i): As identified above, Complainant owns a United States trademark registration for the “Leap” trademark in International Class 9, and has filed service mark applications fo the “Leap” service mark in International Classes 35, 38 and 42.  The domain name in dispute is identical to Complainant’s registered trademark and service marks in that it incorporates generic top level domain designation “.biz” which does not distinguish the domain name in dispute from Complainant’s mark.

[b]        No Rights or Legitimate Interest (STOP Rule 3(c)(ix)(2); STOP ¶ 4(a)(ii);  STOP ¶ 4(c)):   Complainant has devoted years of substantial effort and spent significant sums of money to develop and promote its Leap mark.  As a result of Complainant’s expenditure of such substantial time and money, Complainant has established itself as a leading provider of wireless communication apparatus and services.  Complainant’s securities are listed on the Nasdaq® stock market under the ticker symbol ‘LWIN,” and Complainant is widely known as an owner and operator of telecommunications networks in the investment community.  In addition, Complainant has co-branded its services with the products and services of its primary operating subsidiary, Cricket Communications, Inc. (“Cricket”), which operates in forty markets nationwide.

Through its significant investment of time, money, and effort, Complainant has developed substantial brand recognition for its Leap mark and has developed substantial goodwill among investors and consumers and potential consumers of its services and the goods and services of Cricket.  Complainant consistently provides high quality wireless products and services and has achieved an exemplary reputation in this regard.  As a result, Complainant’s Leap mark has become distinctive and famous, is directly associated with Complainant’s high quality wireless products and services, and is recognized by Complainant’s customers as designating the high quality products and services of Complainant.

Complainant established its trademark rights in the Leap mark at least as early as September 1998.  According to the information about the domain name in dispute provided at www.whois.com, Respondent reserved the domain name in dispute on March 27, 2002, long after Complainant first began using, and established trademark rights in, its Leap mark.

Complainant maintains a website located at www.leapwireless.com.  Complainant’s website promotes the comprehensive goods and services provided by Complainant under its Leap mark.  Complainant’s Leap mark also has been associated with Complainant and its comprehensive goods and services in numerous articles and news features available to investors and consumers on the Internet.

Complainant has searched federal and state trademark records and has determined that Respondent does not own and is not the beneficiary of a trademark or service mark that is identical to the domain name in dispute.  To the best of Complainant’s information and belief based upon its investigation of this matter, Respondent has never used the domain name in dispute (or any similar domain name) in connection with a bona fide offering of goods or services.  Likewise, it does not appear that Respondent has been commonly known by the domain name in dispute or any similar domain name.  Complainant searched for information about Respondent using the Yahoo! and Alta Vista search engines, and was unable to locate any activities by Respondent using the domain name in dispute or the term “Leap.”

Given Complainant’s rights in the Leap mark, and the distinctiveness and fame of the Leap mark, Respondent has no legitimate rights to use the term “Leap” in commerce and has no legitimate right to the domain name in dispute.  See Compagnie de Saint Gobain v. Com-Union Corp., WIPO D2000-0020; General Electric Co. v. Forddirect.com, Inc., WIPO D2000–0394.

[c.]        Registration in Bad Faith (STOP Rule 3(c)(ix)(3); STOP ¶ 4(a)(iii)):

Respondent is not a licensee or affiliate of Complainant, nor has Respondent otherwise obtained permission or authorization to use Complainant’s Leap mark.  Accordingly, Respondent did not have a good faith basis for registering the domain name in dispute.  See Parfums Christian Dior v. QTR Corp., WIPO D2000-0023 (bad faith found where respondent did not have legitimate interest in domain name because complainant did not license or permit respondent to use mark at issue or register a domain name incorporating such mark).

The STOP Policy itself also provides evidence of Respondent’s bad faith.  Under the STOP Policy, in anticipation of possible contests over the use of a domain name that potentially infringes an existing trademark, the framers of the STOP Policy provided a procedure whereby the owners of registered marks could file an advance “IP Claim” with NeuLevel or other registrars, indicating their trademark claim and the details concerning existing intellectual property rights.  The IP Claim filing is later used as the basis for a temporary hold on any new .biz registration during the STOP period created by the Rules.

Complainant filed such an IP Claim here for its Leap mark.  Respondent’s registrar accordingly sent an email to Respondent specifically informing it that an existing IP Claim is on file and providing details as to Complainant’s mark, Complainant itself, a description of the goods and services covered by Complainant’s mark, and complete contact information for Complainant so that Respondent was under no illusions about the likelihood of a contest over the registration of Complainant’s mark or who to contact if there were any questions in its mind.

Respondent nonetheless decided to go forward with its application, so it had to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of Complainant’s mark and the precise reasons there may be a conflict between the domain name in dispute and Complainant’s mark.

The Notice provided to Respondent under the STOP Policy precludes any possibility of registration in good faith of the domain name in dispute under the facts and circumstances here.   See Gene Logic, Inc. v. Chokyu Bock, NAF FA01120001-03042.

Given the distinctiveness and fame of Complainant’s Leap mark, Complainant’s long use and federal trademark registration and pending service mark applications for the Leap mark, and the lack of any legitimate interest by Respondent in the Leap designation, it must be concluded that Respondent registered the domain name at issue for the following reasons:

(i)                         to prevent Complainant from reflecting its Leap mark in a “.biz” domain name;

(ii)                         to disrupt Complainant’s business;

(iii)                         to create an impression of an association with Complainant;

(iv)                         to create an impression of an association with the goods and services offered by Complainant; and,

           

(v)                         to attract business from Complainant.”

                       

B.   Respondent

            “[a.]     LEAP is a common trade name worldwide.  The USA patent and trademark office has over 500 registered trademarks containing the name LEAP.  LEAP Australia is not a competitor to LEAP Wireless.  The domain will not be used for competing interests and will not be sold.

            [b.]       We own a group of companies all within the LEAP Group, and have been using the LEAP name since 1996.  LEAP is recognized as the leading provider of Computer Aided Engineering Solutions in the Pacific Rim.  This involves LEAP Australia Pty Ltd (Australian Company Number 076 166 115, registered October 1996), LEAP Australia Unit Trust, LEAP Pty Ltd (Australian Company Number 080 043 241), LEAP Investments Pty Ltd, LEAP Investments Unit Trust, Design LEAP Unit Trust, and LEAP Superannuation Fund.  Full details for all entities can be provided if needed.

            [c.]       The domain name was not registered in bad faith and was registered on behalf of LEAP Australia by Neil Thomas (an employee of LEAP Australia who manages our websites and internet systems, using a domain name account which auto completed the registrant’s details).”

FINDINGS

We find that Complainant owns a United States trademark registration for the “Leap” trademark in International Class 9, and has filed service mark applications for the “Leap” service mark in various International Classes.  The domain name in dispute is identical to Complainant’s registered trademark and service marks.

Complainant has devoted years of substantial effort and spent significant sums of money to develop and promote its “Leap” mark and has established itself as a leading provider of wireless communication apparatus and services.

Complainant’s securities are listed on the Nasdaq® stock market and Complainant is widely known as a owner and operator of telecommunications networks in the investment community.

Complainant’s “Leap” mark has become distinctive and famous and is directly associated with Complainant’s high quality wireless products and services.

Complainant established its trademark rights in the “Leap” mark at least as early as September 1998.  Respondent reserved the domain name in dispute on March 27, 2002.

Complainant maintains a website which promotes the comprehensive goods and services provided by Complainant under its “Leap” mark.

We conclude that given Complainant’s rights in the “Leap” mark, Respondent has no legitimate rights to use the term “LEAP” in commerce and has no legitimate right to the domain name in dispute.

Respondent is not a licensee or affiliate of Complainant, nor has Respondent otherwise obtained permission or authorization to use Complainant’s “Leap” mark.  Accordingly, Respondent did not have a good faith basis for registering the domain name in dispute.

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

Complainant has rights in the mark.  We find that Respondent does not have rights or legitimate interests in the disputed domain name.

            Respondent’s Rights or Legitimate Interests

We find that Respondent does not have rights or legitimate interests.  We find that Respondent does not own and is not the beneficiary of a trademark or service mark that is identical to the domain name in dispute.  Respondent has never used the domain name in dispute, (or any similar domain name), in connection with a bona fide offering of goods or services.  Respondent has not been commonly known by the domain name in dispute or any similar domain name.

Given Complaint’s rights in the “Leap” mark and the distinctiveness and fame of the “Leap” mark, Respondent has no legitimate rights to use the term “Leap” in commerce and has no legitimate right to the domain name in dispute.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO); Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO).

            Registration or Use in Bad Faith

Respondent is not a licensee or affiliate of Complainant, nor has Respondent otherwise obtained permission or authorization to use Complainant’s “Leap” mark.  Accordingly, Respondent did not have a good faith basis for registering the domain name in dispute.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO) (bad faith found where Respondent did not have legitimate interest in domain name because Complainant did not license or permit Respondent to use mark at issue or register a domain name incorporating such mark).

DECISION

We find as a Panel that Complainant has rights in the mark and further that Respondent has no rights or legitimate interests in the disputed domain name.

We find further that Respondent registered the disputed domain name in bad faith, hence, we find in favor of the Complainant and transfer the disputed domain name to Complainant and we further determine that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

                                               

                                               

                                                                        JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

                                               

                                                            Dated: July 16, 2002