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Generic Top Level Domain Name (gTLD) Decisions |
Sales-Outlets.com v. Marco Publishing
Corporation
Claim Number: FA0204000112524
PARTIES
Complainant
is Sales-Outlets.com, Chicago, IL (“Complainant”)
represented by Craig Entwistle. Respondent is Marco Publishing Corporation, Houston, TX (“Respondent”)
represented by Stephen H Sturgeon, of Law Offices of Stephen H. Sturgeon &
Associates.
The
domain name at issue is <gifts.biz>,
registered with Bondi LLC.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Min
S. Xu, Esquire 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 16, 2002.
On
May 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 10,
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”).
On
June 10, 2002, Respondent requested, without Complainant’s consent, an
extension of time in which to file its Response. The Forum granted Respondent’s request on June 12, 2002, and
extended the Response deadline to July 1, 2002.
An
untimely Response was received and determined to be complete on July 2, 2002.
On July 12, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Min S. Xu as the
single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
contends that it owns U.S. federal trademark applications for its trademark
“GIFTS.BIZ” for use in connection with “on-line
ordering services featuring
general merchandise via a global computer network: Providing on-line electronic
information about the
goods and services of others via a global computer
network. Complainant also contends that
it uses the mark in connection with the goods and service for the on-line
ordering services featuring
general merchandise via a global computer network:
providing on-line electronic information about the goods and services of others
via a global computer network. Further,
Complainant contends that the domain name <gifts.biz> is identical
to the trademark in the trademark application.
Furthermore, Complainant contends that the Respondent does not have
rights in the trademark. Moreover,
Complainant contends that the Respondent has registered the domain name in bad
faith, primarily for the purpose of selling,
renting, or otherwise transferring
the domain name registration to the Complainant or to a competitor of the
Complainant, for valuable
consideration in excess of Respondent’s documented
out-of pocket costs directly related to the domain name.
B.
Respondent
Respondent
contends that the Complainant has not provided any proof of trademark rights of
the trademark that is identical to the
domain name. Respondent also contends that the Complainant has failed to
provide the proof that the Respondent has no legitimate interest in the
domain
name. Further Respondent contends that
the Complainant has failed to prove the element of bad faith.
It is the Panel’s finding that the
Complainant has not proved that the Complainant has acquired rights of the
trademark or service
mark that is identical to the domain name; that the
Complainant has not proved that the Respondent has no rights or legitimate
interests
in respect of the domain name; and that the Complainant has not
proved that the domain name has been registered or is being used
in bad faith.
Also, it is the Panel’s finding that the
Respondent has not proved that it has rights or legitimate interests in respect
of the domain
name, and therefore subsequent challenges under the STOP Policy
against this domain name shall be permitted.
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.
Under the STOP Policy, the burden of
proof of rights in the mark is on the Complainant.
Complainant filed a U.S. federal
trademark applications for its trademark “GIFTS.BIZ” for use in connection with
on-line ordering
services featuring general merchandise via a global computer
network; providing on-line electronic information about the goods and
services
of others via global computer network.
The trademark application for “GIFTS.BIZ” (Serial Numbers 78/124,579)
was filed on April 27, 2002 and has not yet obtained a registered
trademark. The trademark application is pending in the
U.S. Patent & Trademark Office subject to examination that is required
before an application
is approved for registration. Further, this application is an Intent-to-Use application, and it
was filed on the same day as this Complaint was filed. There is no evidence of use provided by the
Complainant. Therefore, the Complainant
has not demonstrated that it acquired common law trademark rights.
Accordingly, this Panel finds that the
Complainant has not yet established protectable rights in its “GIFTS.BIZ” mark
and thus fails
to meet the burden of proof.
Under the STOP Policy, if Complainant
does not have rights in the mark, the Complaint is dismissed, and the Panel
must also determine
whether Respondent has rights or legitimate interests in
the disputed domain name so as to determine that subsequent challenges under
the STOP Policy against this domain name shall be permitted. Such burden of proof is on the Respondent.
No
evidence has shown that Respondent is the owner or beneficiary of a trade or
service mark that is identical to the domain name. The Respondent has not proved that the Respondent has rights or
legitimate interests in respect of the domain name. There is no proof that the Respondent has obtained any registered
trademark for the domain name or any trademark rights under the
common
laws. The Respondent’s business is a
publishing company and has not been commonly known by the domain name. The Respondent’s mere statement that it
publishes newsletters on various topics including the topic GIFTS is not
sufficient to establish
rights or legitimate interests in the disputed domain
name. See Twentieth Century Fox Film
Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (“The
Respondent’s unsupported, self-serving allegations alone are insufficient to
establish
that the Respondent has rights to legitimate interests in respect to
the domain name at issue”).
Therefore,
this Panel finds that subsequent challenges under the STOP Policy against this
domain name shall be permitted.
Under the STOP Policy, the burden of
proof of Respondent’s registration or use in bad faith is on the Complainant.
In this case, the Complainant submitted
three exhibits that reported that the Respondent obtained 17 or 93 domain
names. However, the Complainant has not
provided evidence to demonstrate that the domain name has been registered or is
being used in bad
faith. Also, the
authenticity of the exhibits is not clear.
There is no evidence, but mere allegation, from the Complainant that the
Respondent has registered the domain name primarily for the
purpose of selling,
renting, or otherwise transferring the domain name registration to the
Complainant or to a competitor of the
Complainant. The Respondent responded in its Response that the Respondent is a
publishing company that publishes newsletters on various topics
including the
topic of GIFTS. There is no further
rebuttal evidence from the Complainant.
This Panel finds no sufficient evidence
of bad faith on the part of the Respondent.
DECISION
It
is the decision of this Panel that the domain name in dispute, <gifts.biz>,
be retained with Respondent, that the Complaint is dismissed, and that
subsequent challenges under the STOP Policy against this domain name shall
be permitted.
Min S. Xu,
Esq., Panelist
Dated: July 16, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1177.html