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Generic Top Level Domain Name (gTLD) Decisions |
Alaska Communications Systems Holdings
Inc v. InfoSiteServer
Claim Number: FA0205000114363
PARTIES
Complainant is Alaska Communications Systems Holdings Inc, Anchorage, AK (“Complainant”)
represented by Stephen J Shephard. Respondent is InfoSiteServer, Saipan, MP (“Respondent”) represented by Bill Bezzant.
The domain name at issue is <Alaska.biz>, registered with BB Online UK Limited.
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.
Judge Irving H. Perluss (Retired) is the
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 May 20, 2002; the Forum received a hard copy of the
Complaint on
May 20, 2002.
On June 3, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 24, 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 late Response was received and
determined to be complete on June 27, 2002.
It will, however, be considered by the Panel.
On July 12, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss (Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
1. Alaska Communications Systems is a
registered service mark noting “A full-service telecommunications company
providing residential
and business telecommunications and wireless digital
service; providing local telephone service, long distance service, wireless
service, Internet service and data communications services; offering
communications satellites, video conferencing, direct fiber
optic undersea
links, hosting and messaging; all in International Class 38.” It was first used October 13, 1998, and
first used in commerce May 14, 1999.
The United States Patent and Trademark Office’s registration number
2,513,541 was granted November 27, 2001.
2. Technology for Alaska’s Future is a
registered International Class 38 service marking noting “telecommunications
services, namely,
electronic transmission of voice, data, facsimile and video
via copper wires, fiber optic cables and radio communication; facsimile
transmission services; cellular telephone services; audio and video
teleconferencing services; and customized calling services; in
the nature of
caller-id; call waiting; call forwarding; facility reservation; conference
calling; voice messaging; and Integrated
Services Digital Network (ISDN)
services. It was first used March 3,
1997, and first used in commerce March 3, 1997. The United States Patent and Trademark Office’s registration
number 2, 199,642 was granted October 27, 1998. Originally the mark was registered to Municipality of Anchorage
dba Anchorage Telephone Utility Instrumentality Alaska and was assigned
to
Alaska Communications Systems, Inc. on May 14, 1998.
3. <Alaska.net> is a domain name
owned and used by ACS to host sites for Alaska-based business; first registered
June 9, 1994.
4. Alaska Communications Systems has
built significant “good will and consumer recognition” for itself through use
of the word “Alaska,”
including through the Internet medium. Not only has this been accomplished through
the legitimate use of domain names built on the word “Alaska,” but also through
its own
name of incorporation, and various marketing campaigns.
5. Complainant can demonstrate a
history of selling goods and services in Alaska. There is no doubt that Complainant will develop this domain name
for commercial benefit for the State of Alaska.
6. Complainant can find no evidence
that Respondent holds legitimate rights to or interest in the disputed domain <Alaska.biz>. Respondent has not demonstrated a legitimate
intent to use the <Alaska.biz>
domain name. Respondent cannot claim to
be commonly known by this domain name.
7. At the time of registration,
Respondent has not demonstrated a use of the domain name in good faith. The InfoSiteServer website,
<InfoSiteServer.com>, lists hundreds of domain names in Respondent’s
possession. Many sampled domain names
from this online list are not being used for their stated purpose.
8. Respondent registered the disputed
domain name in bad faith. Respondent
has no business in Alaska, conducts no marketing efforts in Alaska, nor offers
any services in Alaska. Respondent is
diluting the Complainant’s service mark, registered with the USPTO since
1999. Respondent has no connection with
the goods and services, which have come to be known by nearly 500,000 people to
whom Complainant
provides goods and services.
9. The disputed domain name is
identical to a domain name already possessed by Complainant <Alaska.net>
first registered on June
9, 1994.
10. Respondent is clearly aware of the
potential resale value of this domain name.
11. If left in the hands of Respondent,
this domain may very well end up as another domain name in a list of thousands
that are unused
and waiting for secondary purchaser, which would be a clear
violation of the Anticybersquatting Consumer Protection Act.
12. Respondent’s statement of intent to
build its published, extensive holdings of domain names into separate websites
as “business directories”
represents an inconceivable amount of work for the
Respondent, such that it casts doubt on the plausibility of their stated
intent. Taking their statement into
consideration for one domain name may form a rational argument, but keeping in
mind that this argument
would be used for hundreds of drastically diverse
domain names must also be considered and weighed in considering the statement’s
credibility.
B. Respondent
1. Respondent has not infringed on the
service marks of Complainant, in that the Complainant does not have an
exclusive mark on the name
“Alaska,” and the fact that the Complaint has
registered an “Alaska” domain name in another top-level domain does not provide
Complainant
the pre-eminent right to exclude Respondent from registering and
using <Alaska.biz> in the
<.biz> top-level domain.
2. Complainant’s registration of a
trademark “Alaska Communications Systems” would entitle the Complainant to
preference for the domain
name <alaskacommunicationssystems.biz>, but
should have no bearing on <Alaska.biz>
which is substantially different from the trademarked name “Alaska
Communications Systems.”
3. Complainant’s registration of a
trademark “Technology for Alaska’s Future” would entitle Complainant to
preference for the domain
name <technologyforalaskasfuture.biz>, but
should have no bearing on <Alaska.biz>
which is substantially different from the trademarked name “Technology for
Alaska’s Future.”
4. A search of live trademarks at the
U.S. Patent & Trademark Office indicates that there are 213 live trademarks
incorporating the
word “Alaska.”
Complainant’s use of the word “Alaska” in its own trademark was not
precluded by other pre-existing trademarks, nor have Complainant’s
trademarks
precluded others from also incorporating the word “Alaska” into other
trademarks. Complainant therefore does
not have exclusive right to use of the word “Alaska.”
5. Respondent has rights to use of the
domain name <Alaska.biz> which
is the subject of this STOP complaint because the word “Alaska” is a generic
term, which the Respondent has successfully registered
with the NeuLevel TLD
registry. Respondent has an active
business plan for legitimate business use of the <Alaska.biz> domain name, for delivery of business directory
and travel destination information having to do with the Alaska geographic
region.
6. Respondent did not register the
disputed domain name in bad faith because Respondent is not in the business of
selling domain names,
and has never sold a domain name in the past. Moreover,
Respondent has never had any contact with the Complainant at any time any
regard prior to receipt of this Complaint.
Respondent has never had any contact from or with any other party for
discussion or offer of sale of <Alaska.biz>. Respondent is unaware of any resale value of
<Alaska.biz> could have, and
it sought registration of the domain name to bolster Respondent’s plan of
preparing travel and business directories
having to do with the Alaska geographical
region.
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.
STOP Policy ¶4(a)(i)
This proceeding requires summary
disposition.
This is because, unlike domain name
disputes brought under the UDRP, STOP claims require that the disputed domain
name be identical to a trademark or
service mark in which the Complainant holds rights. A domain name that is merely confusingly
similar to a mark cannot be transferred through a STOP claim
(although the holder of a non-identical but similar mark could bring a UDRP
complaint
when the domain name eventually clears any other pending STOP
complaints). 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>).
Complainant’s service marks are “Alaska
Communications Systems” and “Technology for Alaska’s Future.” Clearly, these marks are not “identical,” i.e. the “self-same,” to <Alaska.biz>.
While Complainant is the owner of the domain
name <Alaska.net>, our inquiry is whether Complainant’s marks
(and not its domain names) are identical to the disputed domain name.
The Panel finds and concludes that
Complainant has not established the required first prong of “identical” to a
trademark or service
mark in which the Complainant has rights and its Complaint
must be dismissed.
STOP Policy ¶4(a)(ii)
Despite the failure of Complainant to
prove that its service marks are identical to the disputed domain name, the
Panel must determine
whether Respondent has rights or a legitimate interest in
the disputed domain name.
STOP Policy ¶4(c) functions similarly to
UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or
legitimate interests
in a domain name.
Under STOP Policy ¶4(c), the Respondent
may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name;
or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fid offering of goods or services;
or
iii. The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
Respondent has submitted no evidence
whatever to establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the
Panel finds and concludes
that Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent contends
that it has made demonstrable preparations to use the subject domain name in
connection
with the compilation of Alaska travel information.
The Panel believes that Respondent has
not made a sufficient showing of “demonstrable preparations to use” before
notice of the dispute
so as to comply with ¶4(c)(ii), and it is so found and
concluded.
STOP Policy ¶4(a)(iii)
The Panel has concluded that the
registration of the disputed domain name was not in “bad faith” under the
Policy. This is because the name
“Alaska” is a geographically descriptive term, and a trademark of such a term,
without more (i.e., a secondary
meaning) does not create a legally protectable interest.
Professor McCarthy states in his treatise
Trademarks and Unfair Competition
(2002 Update) §14.1 at 14-3, 14-4:
Terms that are descriptive of the
geographic location or origin of goods and services are regarded by the law as
not being ‘inherently
distinctive’ marks.
Since geographically descriptive terms are not inherently distinctive,
they can be protected as trademarks only upon proof that through
usage, they
have become distinctive. Such an
acquisition of distinctiveness is referred to as ‘secondary meaning.’
* * * * *
In other words, geographically
descriptive marks, without more, are not specific or distinctive enough to
pinpoint a certain seller
and to identify and distinguish his goods from those
of others. Geographically descriptive
terms are placed in the same category as terms that are descriptive of some
quality or feature of goods. That is, a
descriptive geographic adjective can be truthfully applied to a wide range of
goods and services that emanate from or are
connected with a certain
geographical location. Thus, a
geographically descriptive term cannot, per se, function to identify and
distinguish the goods of only one seller in that
geographic location.
A parallel rationale states that
descriptive geographical terms are in the ‘public domain’ in the sense that
every seller should have
the right to inform customers of the geographical
origin of his goods. Therefore, a seller must build up good will and consumer
recognition
in a descriptive geographical term in order to have a legally protectable interest, and take the
term out of the public domain.
(Footnote omitted.)
Since the name “Alaska,” without more, is
in the “public domain,” its registration of it as a domain name by Respondent
was not in
bad faith.
DECISION
It is the decision of the Panel, based on
his findings and conclusions, that the Complaint herein shall be, and hereby is
dismissed. Subsequent challenges
against the disputed domain name shall be permitted.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: July 24, 2002
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