START-UP TRADEMARK OPPOSITION POLICY

DECISION

DREAMINVEST v. Kim Verlinden

Claim Number: FA0205000113257

PARTIES

Complainant is DREAMINVEST, Limal, BELGIUM (“Complainant”) represented by Nicolas De Borrekens.  Respondent is Kim J Verlinden, West Vancouver, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME   

The domain name at issue is <hotels.biz>, registered with Internetters Limited.

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.

Honorable Paul A. Dorf (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 5, 2002; the Forum received a hard copy of the Complaint on May 24, 2002.

On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 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 18, 2002.

On July 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed Honorable Paul A. Dorf, (Ret.) as the single Panelist.

RELIEF SOUGHT 

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS 

A. Complainant

The Complainant contends that the domain name at issue is identical to their trademarked domain name <hotels.be>; that the Respondent has no rights or legitimate interests in the domain name at issue; and that the Respondent registered the domain name at issue in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical to the Complainant’s trademark; that the Respondent has rights and a legitimate interest in the domain name at issue; and that the domain name at issue was not registered in bad faith.

FINDINGS 

Complainant's mark, "Hotels.be" contains the generic word "hotels" which is not exclusive or unique to Complainant.  The Complainant has submitted an exhibit which appears to acknowledge that application was made for the mark "Hotels.be."   The Complainant offers no evidence to show that the Respondent does not have rights or a legitimate interest in the domain name, or that the domain name was registered in bad faith.

The Respondent states that the domain name at issue was awarded to them in a lottery held in the Spring of 2002. 

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 

It appears the Complainant’s application for the mark "Hotels.be" was acknowledged by the Bureau Benelux Des Marques.    As this is the case, it would appear that the Complainant may hold a mark for "Hotels.be" but not the generic term "hotels."  See Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum Feb. 23, 2002) (finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP Policy ¶ 4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>)

Respondent’s Rights or Legitimate Interests 

The Respondent states that the domain name was awarded to her in a lottery held this past Spring; however, no evidence was provided to substantiate the Respondent’s claim.  As Respondent has not demonstrated protectable rights in the mark and does not have the right to exclude others from use of such a mark, be it in a domain name or otherwise.

Registration or Use in Bad Faith 

As the Complainant has failed to demonstrate protectable rights in the mark "hotels" it is not necessary to determine if the domain name at issue was registered in bad faith.

DECISION

The Complaint is dismissed, although subsequent challenges under the STOP Policy against this domain name SHALL be permitted.

Honorable Paul A. Dorf, (Ret.), Panelist
Dated:  July 22, 2002

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