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Generic Top Level Domain Name (gTLD) Decisions |
Simpson Investment Company v. Daks
Simpson Group PLC
Claim Number: FA0204000112495
PARTIES
Complainant
is Simpson Investment Company,
Seattle, WA, USA (“Complainant”) represented by Kevin S. Costanza, of Seed Intellectual Property Law Group PLLC. Respondent is Daks Simpson Group PLC, London, UNITED KINGDOM (“Respondent”)
represented by Anne Wong, of Carpmaels & Ransford.
The
domain name at issue is <simpson.biz>,
registered with Ascio Technologies, 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.
Alan
L. Limbury 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 30, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 30,
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”).
An
untimely joint Response by both parties was received and determined to be
complete on June 19, 2002.
On 22 July 2002, pursuant to STOP Rule 6(b), the Forum
appointed Alan L. Limbury as
the single Panelist.
Having
settled their dispute, the parties seek denial of the remedy sought by
Complainant. Alternatively, transfer of
the domain name from Respondent to Complainant. In either event, an order that
no further challenges may
be brought under the STOP procedures.
A.
Complainant
Complainant
was founded in 1890 as the S. G. Simpson Company in Matlock, Washington, and
has used the SIMPSON name and mark in connection
with wood and paper products
and services continuously since its founding.
Complainant is the owner of valid and subsisting registrations for the
trademark “SIMPSON” in more than 20 international jurisdictions,
including the
United States, Canada, Japan, Brazil and Germany.
The
disputed domain name, <simpson.biz> uses the identical text
string, “simpson”, which is a valid and subsisting registered trademark of
Complainant.
In
its Complaint, on information and belief, Complainant asserted that Respondent
has no rights or legitimate interests in the disputed
domain name and
registered it in bad faith. In the
joint Response (to which, despite its untimely filing, the Panel has regard
pursuant to STOP Rule 10) Complainant stated that,
for the purposes of this
proceeding, it does not dispute that “Respondent has met its burden of showing
legitimate rights” to the
disputed domain name and “has met its burden of
showing that it registered the domain name in good faith”.
B.
Respondent
Respondent
or its predecessors in title have used the trade name and the mark SIMPSON in
connection with the sale of clothing and
other goods in the United Kingdom
continuously since at least 1894 and subsequently in other countries. Respondent
was formerly known
as S. Simpson PLC and before that (between 1933 and 1986) as
S. Simpson Ltd.
Respondent
owns United Kingdom registered trademark 2212385 ALEC SIMPSON for clothing,
footwear and headgear, issued April 2000. Respondent’s
subsidiary Daks Limited
(formerly Simpson (Piccadilly) Limited) is the registered proprietor of United
States trademark SIMPSON PICCADILLY
(stylized) issued 6 February 2001 and of
U.K. registrations for the mark SIMPSON/simpson (stylized, series of two) for
articles of
clothing (issued 7 March 1997) and for the mark Simpson PICCADILLY
in various classes, dating back to 1954.
Respondent
applied to register the disputed domain name (and others, not presently
relevant) with the intent of using it to promote
sales of its products.
C.
Both parties
Both
Complainant and Respondent have presented sufficient evidence under the STOP
procedures to show legitimate rights to a mark that
is identical to the domain
name at issue. Thus, no purpose would be served by permitting further
challenges under the STOP procedure,
because no challenger would be able to
meet the burden of establishing that the Respondent lacked any rights in the
domain name.
Respondent has established a legitimate
interest in the disputed 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, properly
brought, 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.
Under
Rule 17(a), settlements between Complainants and Respondents shall be allowed
only if the domain name registration has no other
pending challenges. Here
there is another pending challenge. Accordingly,
despite Complainant’s concessions for the purposes of this proceeding and the
parties’ common prayer for one or other
of them to have both the domain name
and the benefit of a decision under STOP paragraph 4(l)(ii)(1) or (2) that no
subsequent challenges
under the STOP shall be permitted, the Panel has examined
the evidence carefully to ensure that the result does not unfairly disadvantage
other pending challengers.
Complainant
has rights in the trademark SIMPSON. The disputed domain name is identical to
that mark. Complainant has established this
element.
By
exhibiting copies of the relevant trademark certificates and through the
Declaration of Anne Wong, Respondent has clearly demonstrated
that it has a
legitimate interest in the name SIMPSON and thus the disputed domain name. Accordingly, Complainant has failed to
discharge its burden of proving absence of rights or legitimate interests in
the disputed domain
name on the part of Respondent.
There is no evidence of bad faith on
the part of Respondent. Complainant has failed to establish this element.
Pursuant to STOP Rule 4(l)(ii)(2) the
Panel dismisses the Complaint and decides that no subsequent
challenges under the STOP against the domain name <simpson.biz>
shall be permitted.
Alan L. Limbury, Panelist
Dated: 26 July, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1292.html