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Generic Top Level Domain Name (gTLD) Decisions |
National
Business Furniture v. Web Express
Claim Number: FA0204000112587
Complainant
is National Business Furniture,
Milwaukee, WI (“Complainant”).
Respondent is Web Express, Inc.,
Bridgewater, NJ (“Respondent”).
The
domain name at issue is <furnitureonline.biz>,
registered with 007 Names, 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.
Hon.
Ralph Yachnin 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
April 26, 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”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On July 15, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the
Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response
from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<furnitureonline.biz> domain name is identical to Complainant's
FURNITUREONLINE.COM mark.
Respondent
has no rights or legitimate interests in the <furnitureonline.biz>
domain name.
Respondent
registered the <furnitureonline.biz> domain name in bad faith.
B.
Respondent
Respondent
has failed to submit a Response.
Complainant has applied for a trademark
with the United States Patent and Trademark Office for
FURNITUREONLINE.COM. Complainant
asserts that it has used this mark in commerce since 1999 in relation to its
online furniture business.
Respondent registered the disputed domain
name on March 27, 2002.
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate
pursuant to paragraph 14(b)
of the STOP Rules.
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 established that it has rights in the FURNITUREONLINE.COM mark due to its
use in commerce since 1999 in relation to
its online furniture business. Complainant has not asserted any rights in
FURNITUREONLINE without the “.COM” addition to the mark. However, it has been recognized that gTLD’s
are interchangeable in trademarks, and irrelevant when determining whether a domain
name
is identical or confusingly similar.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant). Therefore, even though FURNITUREONLINE.COM is not exactly
identical to <furnitureonline.biz>, they are recognized as such
under the law. See U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of
Domain Names," Section I (Sept. 29, 1999) (“When a trademark, service mark, collective mark or certification
mark is composed, in whole or in part, of a domain name, neither
the beginning
of the URL (http://www.) nor the TLD have any source indicating significance.
Instead, those designations are merely
devices that every Internet site
provider must use as part of its address."); see also AJC Int’l
v. None a/k/a Cox Holdings, FA 109367 (Nat. Arb. Forum June 11, 2002)
(finding that, for the purpose of domain name disputes, Respondent’s service
mark in AJC.COM
was equivalent to AJC and thus identical to
<ajc.biz>).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Despite
the fact that all inferences may be made in favor of the Complainant,
Complainant has failed to properly assert that Respondent
lacks rights or
legitimate interests in the disputed domain name. Complainant has merely repeated the STOP Policy, and has failed
to assert any grounds upon which the Panel may make any inferences
or findings.
See Burke Inc v. Leader Tech. LLC, FA 102822 (Nat.
Arb. Forum March 29, 2002) (“The Panel will not erect castles in the air in
order to make a case hypothetically where
the Complainant wholly fails to meet
its obligations under the Rules to set forth the grounds on which the Complaint
is based and
the supporting evidence. Since the Complainant has not provided
any evidence of rights in any trademark or service mark, the first
condition of
paragraph 4(a) of the STOP Policy was not met, and the Panel need not consider
the matter further.”).
Therefore, the Panel finds that there is
insufficient evidence to find whether or not Respondent has rights or
legitimate interests
pursuant to STOP Policy ¶ 4(a)(ii), or registered and used
the <furnitureonline.biz> in bad faith pursuant to STOP Policy ¶
4(a)(iii).
Having failed to establish a necessary
element required under the Start-up Trademark Opposition Policy, the Panel
concludes that relief
shall be hereby denied.
Accordingly, it is Ordered that the
Complaint be dismissed. There
are no further challenges pending against this domain name under the STOP
Policy.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 17, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1185.html