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Generic Top Level Domain Name (gTLD) Decisions |
Spherion Corporation v. Neal Solomon
Claim Number: FA0204000112454
PARTIES
Complainant
is Spherion Corporation, Ft.
Lauderdale, FL (“Complainant”) represented by Rochelle M Ammiano.
Respondent is Neal Solomon
Gloversville, NY (“Respondent”) represented by Stephen H. Stugeon, of Law
Offices of Stephen H. Sturgeon & Associates, PC.
The
domain name at issue is <saratoga.biz>,
registered with All Domains.com, 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.
Tyrus
R. Atkinson, Jr., 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 27, 2002.
On
May 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 23,
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
May 23, 2002, Respondent’s attorney requested an extension of time with which
to submit a Response, without obtaining Complainant’s
consent. The Forum granted Respondent’s attorney’s
request on May 24, 2002 and extended the Response deadline to June 12, 2002.
A
timely Response was received and determined to be complete on June 12, 2002.
On July 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
owns a subsidiary named Saratoga Institute.
Saratoga
Institute is a business organization offering consulting services in the field
of human resources.
Complainant’s
principal office is located in Ft. Lauderdale, Florida.
Complainant
owns a Service Mark registration for the word, SARATOGA, with registration date
of February 19, 2002.
Respondent
should not be considered to have any legitimate rights in the domain name, <SARATOGA.BIZ>. Respondent owns no trademark or service
marks incorporating the SARATOGA word mark.
Respondent is engaged in the practice of financial planning and does not
appear to have any affiliation with any good or services
offered under the name
SARATOGA. Respondent has no history of
conducting a bona fide offering of goods or services.
Saratoga
Institute has been using the SARATOGA name since 1979 and has build up goodwill
in the name.
Complainant
is not in a position to make any allegations of fraud against Respondent, as it
has no facts to back up such a claim.
B.
Respondent
Respondent
is a resident of Saratoga County, New York and conducts business activities in
the county. Since 1983, he has been
engaged in numerous demonstrable activities to market his business within the
county. He provides marketing and
advertising services to other businesses in Saratoga County. He registered the domain name <SARATOGA.BIZ> in order to
utilize the domain name for the furtherance of his business activities.
Respondent’s
business activities include financial planning, retirement planning, retirement
projections, pension option analysis,
investment and wealth management, and
other financial services.
The
word, SARATOGA, is used extensively by businesses in Saratoga County, New York,
as a geographical indicator by many businesses. The trademark registration of a generic word for certain limited
services should not enable the Complainant to take away all domain
names
containing the word throughout the world.
Complainant
fails to carry the burden of proof as to the issues of rights and interests and
bad faith.
Respondent
made preparation for the use of the domain name in connection with a bona fide
offering of goods and services by a number
of business contacts and
consultations prior to any notice of the dispute.
1. Complainant is the parent company of
Saratoga Institute.
2. Complainant is the parent company of the
organization which owns the United States Patent and Trademark Office
Registration No. 2,539,011
for the Service Mark, SARATOGA with registration
date of February 19, 2002 and showing first use in commerce as September 1979.
3. The Service Mark is granted for the
purpose of it being used in human capital consulting, and related services.
4. Respondent is an individual in the
financial planning business that lives and does business in Saratoga County,
New York.
5. Respondent registered the domain name, <SARATOGA.BIZ> on March 27, 2002.
6. The Service Mark, SARATOGA, and the
domain name, <SARATOGA.BIZ>,
are identical.
7. Complainant has limited rights and
interests in the word, SARATOGA.
8. Complainant fails to prove that Respondent
is without rights and interests in the domain name.
9. Respondent proves that, prior to notice
of the dispute, that he made demonstrable preparations to use the domain name
in connection
with a bona fide offering of services.
10. Complainant fails to prove that
Respondent has committed any acts of bad faith in the registration or use of
the domain name.
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
has rights in the mark, SARATOGA, by virtue of the registration of the service
mark with the United States Patent and
Trademark Office. Complainant’s rights
are limited, under the evidence presented in this proceeding, as discussed in
the next section. The mark, SARATOGA,
and the domain name, <SARATOGA.BIZ>,
are identical. see Princeton Linear Assoc., Inc. v. Copland o/b/o LAN
Solutions Inc. FA102811 (Nat. Arb. Forum Feb. 8, 2001).
Complainant’s entire allegations on this issue are as
follows: “Neal Soloman, the Registrant of SARATOGA.BIZ, should not be
considered
to have any legitimate rights in this domain name. Upon completing a thorough search on the
Unites States Patent and Trademark Office database, Respondent does not appear
to own any
trademarks or service marks incorporating the SARATOGA word
mark. Respondent is engaged in the
practice of financial planning and does not appear to have any affiliation with
any good or service offered
under the Saratoga word mark. Accordingly, since Respondent has no history
of conducting a bona fide good or service under the SARATOGA name, it has not
established
any goodwill in the Saratoga name, and thus has acquired no
trademark or service mark rights.”
The allegation that Respondent is not the
owner or beneficiary of a trade or service mark that is identical to the domain
name, is
not disputed by Respondent. Thus, rights to and legitimate interests
in the domain name, by the method set out in Paragraph 4(c)(i),
is not
available to Respondent.
Respondent does not dispute the
allegation that Respondent has not been commonly known by the domain name. Thus, rights to and legitimate interests in
the domain name as set out in Paragraph 4(c)(iii), is not available to
Respondent.
Complainant fails to address the issues
set out in Paragraph 4(c)(ii). That
Paragraph reads that one may demonstrate rights or legitimate interests in the
domain name by showing as follows:
“Before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services…”
Both Complainant and Respondent are
required to produce “concrete evidence” to support their allegations in a
domain name dispute
case. see PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010
(WIPO Feb. 14, 2002) accepting the reasoning set out in Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
In Do The Hustle, LLC v. Tropic Web,
one of the concrete evidence methods suggested was the inclusion of affidavits
of third parties as opposed to bare allegations.
Respondent undertakes to present concrete
evidence that he made demonstrable preparations to use the domain name for a
bona fide offering
of services by offering the sworn affidavit of Respondent
and nine other individuals. In his
Affidavit, Respondent admits that he searched the trademark register and found
that SARATOGA was a trademark registration of
Complainant but decided that the
services offered by Complainant were so different than those supplied by
Respondent that he was
authorized to register <SARATOGA.BIZ>.
Respondent states that he choose the name, <SARATOGA.BIZ>, because it related to his home base of
operations, Saratoga County, New York.
Respondent engaged in numerous discussions and planning meetings with
technical people and other business people to build a business
plan for <SARATOGA.BIZ>. Respondent names the individuals with whom
he consulted and the content of the discussions held between the parties. All of the individuals with whom Respondent
consulted made their affidavits supporting Respondent’s statements. Scott Fultz testified his company, Mountain
Media, an e-commerce, application hosting, graphic design, and web hosting
company, spent
considerable time with Respondent regarding the utilization of <SARATOGA.BIZ>. James Boykin’s Affidavit states that he is
in the business of coding Web sites. He
engaged in lengthy planning discussions about prospective business use of the
domain name, <SARATOGA.BIZ>. He states that he knows “that Mr. Soloman
intends to use the domain name SARATOGA.BIZ (1) to serve his existing business
and (2) for
the possible offering of advertising services to businesses in
Saratoga County…” The other affidavits
support other portions of Respondent’s Affidavit.
Evidence of demonstrable preparations for
use of the domain name is shown. The
next question presented is whether the demonstrable preparations are “in
connection with a bona fide offering of goods or services.”
Paragraph
4(c)(ii). It is not, of course, a
bona fide offering of services where one makes demonstrable preparation to use
another’s trademark to attract
users to the Respondent’s domain name. see
Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA102971 (Nat.
Arb. Forum Feb. 25, 2002). One may not
trade on the goodwill of another and conduct a bona fide offering of
services. see William L. Lyon &
Assoc., Inc. v. Yata, FA103043 (Nat. Arb. Forum March 21, 2002).
On the other hand, a Respondent may
fairly use descriptive or generic terms as a commercial domain name and where
Respondent shows
that the domain name is comprised of generic and/or
descriptive terms, and, in any event, is not exclusively associated with
Complainant’s
business. See Eastbay
Corp. v. VarandaGlobal.com Inc., FA105983 (Nat. Arb. Forum May 20, 2002).
Respondent presents as an Exhibit to the
pleadings copies of several pages of the telephone book published to list the
telephone numbers
in Saratoga County, New York. The pages list hundreds of businesses that use the word
“Saratoga” as part of the business name.
The Panel is convinced that the word SARATOGA is not exclusively
associated with Complainant’s business
Respondent argues that the word,
SARATOGA, is a generic term for a geographical location. Complainant does not address this issue.
It has been held that in the United
States a geographically descriptive name is to be treated as a generic term and
does not by its
registration with the United States Patent and Trademark Office
become absolutely protectable. see American Airlines, Inc. v. Webwide
Internet Communication GMBH, FA112518 (Nat. Arb. Forum June 13, 2002) which
held that the registered mark “American” would not prevent Respondent from
retaining
the domain name, <American.Biz>. see also Travel Berkeley Springs, Inc. v. Glens Country
Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) which held that the
Complainant could not have superior right to use “Berkeley Springs” to
the
exclusion of other entities, particularly where there were so many other
businesses that used geographic names as part of their
business name.
“In this regard also, the Policy applies
to geographical indications that function as trademarks in like manner as it
applies to generic
words that function as trademarks.” MIRC Elecs. Ltd. v.
Onida.com, D2001-1061 (WIPO Dec. 20, 2001).
“While geographical names are not
protected as such under the Policy, they may nevertheless qualify for
protection under the Policy
as trademarks if shown by evidence of their use to
have become distinctive of the goods and services of a particular trader. In this respect they may be protected as
trademarks in the same way as descriptive (generic) words shown to have become
distinctive. It is therefore a matter
of evidence in each case as to whether a complainant has proved that the
geographical name functions as a
trademark.” Id.
“In some cases, place names, either alone
or in combination with other elements, have been held to constitute trademarks or
service
mark…but in all such instances the Panels’ decisions were based on the
finding that the geographical name had acquired distinctiveness
vis-à-vis the
goods and services of the Complainant by virtue of the activity carried out by
the Complainant.” Valdifiemme.ir srl v. Paolo Alzalamira /Fenix
Lab.srl, D2002-0149 (WIPO Apr. 30,
2002).
The only evidence presented by
Complainant that could be considered relevant to this issue is the bare
allegation that “Saratoga Institute
has built up a great deal of goodwill in
the Saratoga name and has established both domestic and international
recognition under
the name” and the inclusion of a brochure of Saratoga
Institute stating the nature of its business activities. This is not the quality of proof necessary
to carry the issue for Complainant. see PRL Holdings, Inc. v. Search Hound, DBIZ2002-00010
(WIPO Feb. 14, 2002).
The Panel finds that Complainant failed
to prove that it has rights or interests in the mark, SARATOGA, that are
superior to those
possessed by Respondent.
Generally, the first to register a domain name containing a generic mark
should prevail absent bad faith. see CRS Technology v. Condenet Inc., FA
93547 (Nat. Arb. Forum Mar. 28, 2000).
Complainant fails to carry its burden on
this issue. Respondent must be found to
prevail in this proceeding.
Complainant presented no evidence of
Respondent’s bad faith registration or use of the
domain name.
DECISION
The
Panel decides that the Complaint be dismissed and the demand that the domain name,
<SARATOGA.BIZ>, be transferred to Complainant
is denied. The Panel finds that further challenges are
to be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 22, 2002
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