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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0112000102786
Complainant is Bob Donovan of Danaher Precison Systems, Salem, NH (“Complainant”). Respondent is Curt Troutwine, Louisville, KY (“Respondent”).
The domain name at issue is <neat.biz>, registered with Register.com.
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.
M. KELLY TILLERY, 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 December 8, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.
On December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 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 January 3, 2002.
On January 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Bob Donovan of Danaher Precision Systems contends that Danaher Precision Systems was formerly known as New England Affiliated Technologies and that it owns <neat.com> and uses the NEAT logo and <neat.com> to conduct its business.
Complainant further contends that it submitted a claim for the domain name in question <neat.biz> in June of 2001 and that many of its products use “NEAT” as part of the model name. Complainant’s products appear to be some type of electronic controllers.
Complainant contends that Respondent’s use of the <neat.biz> may divert business from <neat.com> and it may cause confusion for Complainant’s customers or potential customers.
Complainant further contends that the “lack of notification until after the URL was registered to have been done in bad faith.”
B. Respondent
Respondent acknowledges that the domain name in question, <neat.biz>, is in fact similar to Complainant’s registered domain name <neat.com> and that “neat” is clearly an acronym for New England Affiliated Technologies, the former name of Complainant. Respondent, contends, however, that the word “neat” is generic, that it appears almost a half a million times in the Altavista database and that he was unaware of the association of the word “neat” with Complainant until he received a copy of the Complaint.
Respondent contends that he does and will continue to differentiate his use of the <neat.biz> domain name from Claimant’s existing domain name of <neat.com>.
Respondent contends that he is “currently partnered in a small business by the name of “NeatStuff” which sells antiques, interiors and collectibles.” Respondent contends that he has been operating an online storefront under the domain name <neatstuff.ws> for some time and that this website provides full online shopping for various antiques and collectible items.
Respondent contends that Danaher Precision Systems “designs and manufactures precision electrical mechanical positioning systems that enable a multitude of advanced processees” and therefore Complainant’s and Respondent’s businesses could not be confused by customers or potential customers since they are in completely different industries. Respondent contends that he offers no goods or services which can be considered identical or confusing similar to those of Complainant.
Respondent does not deny that he has no unique rights in the domain name <neat.biz> since the word is a generic English word that is used in everyday speech.
Respondent contends that he does have a legitimate interest in respect of the domain name in that the name of his business is “NeatStuff” and one definition of the word “neat” is “wonderful or terrific” and that aptly describes his products. Respondent contends that <neat.biz> provides a nice, simple, short domain name by which to help attract new customers and hopefully sell more products.
Respondent contends that he has no intention of selling, renting or auctioning the domain name to Complainant or anyone else and that he was under no obligation to notify Complainant of his registration of said domain name.
Respondent contends that he has registered and used this domain name in good faith.
(1) Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name is identical to a trademark in which Complainant has rights.
(2) Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interest in respect of the domain name.
(3) Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name has been registered or is being used in bad faith.
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 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 Complainant has rights; and
(2) 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 Complainant asserts rights.
Complainant alleges that it has used and is using the mark “neat” in connection with the sale of certain types of electronic products. Although Complainant’s submissions are scanty in this and other regards, Respondent does not deny same or produce evidence to the contrary. Under those circumstances, Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name registered by Respondent is identical to a trademark in which Complainant has rights.
Complainant makes no argument and submits no evidence in support of its contention that Respondent has no rights or legitimate interests in respect to this domain name. On the other hand, Respondent has presented evidence that it owns and operates a business called “NeatStuff” selling “neat” items and that he intends to utilize the domain name <neat.biz> to market his “neat” items. Complainant has presented neither argument nor evidence to contradict same. Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests with respect to the domain name.
Complainant’s only argument in support of its claim that Respondent’s registration or use is in bad faith is that Complainant was not notified of the registration of <neat.biz> prior to Respondent registering same. Neither party has presented any authority for the proposition that a Respondent is required to somehow give prior (or even simultaneous) notice to an alleged mark owner of such a registration and this Panelist is unaware of any such authority. Complainant has thus presented no meritorious argument and submitted no convincing evidence in support of its contention that Respondent has registered or is using the domain name in bad faith. On the other hand, Respondent has presented evidence that it has registered and is using the domain name in good faith in connection with his legitimate business interests and that he has not to date and has no present intention of trying to sell, rent or auction the domain name to anyone. Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name has been registered or is being used in bad faith.
Complainant’s Complaint is hereby dismissed.
Dated: January 30, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/125.html