START-UP TRADEMARK OPPOSITION POLICY

DECISION

Computer Patent Annuities Limited Partnership v.  Lin Z. Song

Claim Number: FA0204000112423

PARTIES

Complainant is Computer Patent Annuities Limited Partnership, Jersey, UNITED KINGDOM (“Complainant”) represented by Tom Farrand.  Respondent is Lin Z. Song, Zhejiang, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cpa.biz>, registered with XIN Net Corp.

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.

James Alan Crary 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 April 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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”).

The Response was received on June 5, one day beyond the twenty-day response period provided for under the STOP Policy. The Panel nevertheless felt it appropriate to consider the Response as if timely filed. It was noted that the Respondent did not appear to be a native English speaker, therefore the Panel decided to consider the untimely Response, following the principle that in an administrative proceeding, wherever possible, the decision should be based on the merits as opposed to technicalities as this better serves the interests of justice.

On July 11, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is beneficial owner of trademark registrations in the United States, the United Kingdom, and other countries. The CPA trademark is registered in Classes 9, 35, and 42 as they relate to intellectual property services provided by Complainant. The CPA trademark was first registered in the United Kingdom in August 1984. The trademark is said to have been in continuous use in 1969.

The mark is used on publicity materials, letterheads, and on Complainant’s web site.

The domain name is identical to the trademark CPA in which Complainant had established rights. The use of <cpa.biz> in that form by the Respondent was bound to cause confusion in Complainant’s marketplace.

Complainant it was asserted is the world’s leading provider of intellectual property support services. It manages almost 2 million intellectual property rights on behalf of 20,000 clients worldwide. In addition to its headquarters office in Jersey, UK Channel Islands, it maintained regional offices in London, Washington DC, San Francisco, Paris, and Munich; and representative offices or offices through partners in Japan, South Korea, Australia, New Zealand, Hong Kong, Singapore, and Spain.

To the best of Complainant’s knowledge and belief, Respondent had no legitimate right. He used the trademark CPA. Complainant was not aware of any registered trademarks in CPA, which were held by the Respondent, nor was it aware of any use or intended use by the Respondent of any trademark or domain name consisting of or containing the letters CPA.

Complainant maintained that Respondent had registered domain names which consisted of or contained other well-known trademarks. The domain name <555.biz> had been registered by the Respondent, the trademark 555 was a trademark of British-American tobacco which had been used for many years in its cigarette business. Finally it was asserted that Respondent register the domain name for the sole purpose of selling, renting, or otherwise selling the domain name <cpa.biz> to the claimant.

B. Respondent

CPA was said to be a general word meaning Certified Public Accountant. Complainant trademark was not used to designate Certified Public Account. CPA was a general word long before Complainant’s trademark.

Respondent denied that there were any circumstances indicating   he had registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of the Complainant.

It was noted that Complainant did business by the name <cpajersey.com>.

Respondent asserted that he had plans to use <cpa.biz> for a future web site that would consist of a directory of certified public accountants, a purpose unrelated to Complainant’s business.

FINDINGS

1. The Complainant is the beneficial owner of the CPA trademark registered in the United States, United Kingdom, and other countries and used in connection with its intellectual property business and services. Complainant uses its CPA mark exclusively in connection with its intellectual property business and other services.

2. Respondent registered the <cpa.biz> domain name on March 27, 2002. Respondent has not developed a use for the domain name.

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

The Panel concluded that the Complainant has established rights in the CPA mark through substantial continuous use of the mark and on the basis of trademark registrations, which date back to the mid-1980s.

Respondent’s <cpa.biz> domain name contains Complainant’s CPA mark in its entirety. But for the inconsequential addition of “.biz” Respondent’s domain name is identical to Complainant’s mark. Accordingly, the Panel finds the STOP Policy Paragraph 4(a)(i) has been satisfied.

Respondent’s Rights or Legitimate Interests

STOP Policy Paragraph 4(c) sets forth several ways in which a Respondent may demonstrate its rights or interests by establishing:

i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

            or that also

ii. Before any notice to the Respondent of the dispute, its use or demonstratable preparations for use, of the domain name or a name corresponding to the domain name in connection with a bona fide 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.

The Respondent did not assert ownership of or beneficiary status of a trade or service mark that was identical to the domain name and further there was no evidence in the record to support such a finding.

With regard to Paragraph 4(c)(ii) the evidence did not support a finding that Respondent had engaged in any bona fide offering of goods or services in connection with the domain name or that there were demonstratable preparations for use.

Respondent merely asserts that it had a plan to start a web business offering a directory service for certified public accountants or a listing of certified public accounts. But Respondent’s unsupported self-serving assertion that it has a plan to use <cpa.biz> for a legitimate purpose was insufficient to establish that it has rights or legitimate interests in respect to the domain name at issue. Twentieth Century Fox Film, Corp. v. Benstein, FA102962 (Nat. Arb. Forum Feb. 27 2002). In Benstein, the base assertion that Respondent had registered the domain name <foxstudios.biz> in order to get a web address for her planned dance studios without supporting evidence was insufficient to establish that she had rights or interests in the domain name at issue.

The Panel could make no finding that Respondent had rights or legitimate interests under Paragraph 4(c)(iii). The Respondent did not assert nor was there any evidence in the record to suggest that Respondent had been commonly known by the domain name.

The Panel therefore concluded that the Respondent had no rights or legitimate interests in the disputed domain name <cpa.biz>.

Registration or Use in Bad Faith

The Rules in Policy of the STOP Policy differ from UDRP Claims in a very significant and fundamental way. This is because IP claims could be registered in advance of the .biz registration process by a trademark owner. The registrant is notified of the potential for trademark infringement before being allowed to proceed with the .biz registration. This has the effect of putting the Respondent on notice that there are known trademarks using the words in the domain name that belong to a direct or potential competitor at the time of the registration of the domain .biz. Genelogic Inc. v. Bock, FA103042 (Nat. Arb. Forum Mar. 4, 2002).

The Panel concluded that there was circumstantial evidence of a bad faith registration for the purpose of preventing the Complainant, the beneficial owner of the CPA mark from reflecting that mark in a corresponding domain name. (STOP Policy 4(b)(ii)).

Had there been evidence that Respondent was actually using the domain name in a business or that he had made significant preparations for use prior to notice of the dispute, this Panel might have been able to reach different conclusion. Respondent’s bare assertion that it had a plan for use of <cpa.biz> in the future without any supporting evidence suggested to the Panel that he had no bona fide purpose for the registration. Valspor Sourcing, Inc. v. TIGRE, FA112596 (Nat. Arb. Forum June 4, 2002).

The Panel concluded Respondent had notice of the CPA mark and constructive notice of Complainant’s rights in relation to the CPA mark. Respondent did not deny that he had notice of the mark through the STOP process.

DECISION

The Panel found for the Complainant and against the Respondent. In accordance with Paragraphs 10 and 15 of the STOP Policy, it is directed that the domain name <cpa.biz> be transferred to the Complainant, and that subsequent challenges under the Policy against this domain name shall not be permitted.

James Alan Crary, Panelist
Dated: July 25, 2002

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