START-UP TRADEMARK OPPOSITION POLICY

DECISION

Financial Aid.com LLC v. Mark Schaffhausen

File Number: FA0204000109368

PARTIES

Complainant is FinancialAid.com LLC  (“Complainant”) represented by Donna Rubelman, Esq., Rubelmann & Associates, Inc., 501 Herondo Street, Hermosa Beach, CA 90254.  Respondent is Mark Schaffhausen,  145 Sherwood Road, Shoreview, MN 55126 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <FinancialAid.biz>,  registered with 1STDOMAIN.NET

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.

Louis E. Condon, 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”).

The Complaint was submitted by Complainant  and  received  by  the Forum on April 8, 2002 .

On June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 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 July 11, 2002.

On July 22, 2002, pursuant to STOP Rule 6(b), the Forum appointed Louis E. Condon  as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

               There is no dispute that Respondent’s second-level domain name, FinancialAid, is identical to Complainant’s service mark, “FinancialAid”. Further, Complainant has established rights to the disputed domain name because it has used the mark in commerce. Complainant has further applied to register FINANCIALAID.COM and FINANCIALAID.COM & Design for financial services in the United States Trademark Office. In addition, Complainant has an established presence on the Internet through its <Finaid.com>, <Financialaidadvisors.com>, <Financialaides.com>, Financialaidform.com>, <Financialaidforms.com>, <Financialaid.info.info>,      <Financialaidinfo.net>, <Financialaidwebsite.com>, <Financialat.com>, <Findfinancialaid.com>, and <Financialaide.com> domain names.                  

               Respondent has no known ownership interest or beneficial interest in the service mark. Accordingly, Respondent has no rights or legitimate interests in the <FinancialAid.biz> domain name. Further, Respondent’s domain name is not associated with the bona fide offering by Respondent of goods or services. Respondent’s domain name is not associated with an active web site.

               Respondent registered the <FinancialAid.biz> domain name in bad faith. First, Respondent has no trademark rights in the domain name. Second, Respondent has not used the domain name in connection with an active web site. Third, Respondent has not used the <FinancialAid.biz> domain name in connection with the bona fide offering of goods or services. Finally, any Internet user attempting to locate the services provided under Complainant’s service mark will be mistakenly directed to Respondent’s domain name.  

               Complainant’s substantial investment in the FINANCIALAID name is readily noticeable to anyone accessing the <FinancialAid.com> web site. Complainant’s use and registration of numerous closely-related variants of the <FinancialAid.com> domain name has put the public on notice of Complainant’s substantial financial investment in the Financial Aid trade name.

               In summary, Complainant postulates that these circumstances suggest that Respondent registered the <FinancialAid.biz> domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs; preventing the Complainant from reflecting the FinancialAid service mark in a corresponding domain name; and creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location.

B. Respondent

               Prior to registering the name <FinancialAid.biz> on March 27, 2002, Respondent conducted a search of the U.S. Trademark & Service Mark database and found that no one had a trademark or service mark registered for “financial aid”. Respondent acknowledges he does not have a trademark for “Financial Aid”. Nor is he aware of. any one else who has a trademark for “financial Aid”. This term is considered generic and is available for anyone’s use.

              

Complainant claims a service mark on the name Financial Aid. However, Complainant’s application, dated two months after Respondent received the domain name <FinancialAid.biz>, is for the name “FinancialAid.Com”. This is clearly different than Financial Aid and is an attempt to extend rights from FinancialAid.com to the term Financial Aid. The Complainant had the opportunity to register the term Financial Aid during the “Sunrise” period for both the .US and .Info extensions. Given the fact that the Complainant did not receive either of these extensions clearly overstates the fact that they do not have any legal rights to the generic term Financial Aid.

              

Respondent received the domain name <Scholarship.info> in October of 2001. Immediately after receiving the name, Respondent designed a website which features ideas and resources for those searching for scholarships and financial aid, along with other related services. This site has been in operation for several months at <Scholarship.info>.   Since then, Respondent has also obtained the domains: <FinancialAid.biz>,   <StudentLoans.biz>,   <Scholarship.biz>,   <Scholarships.US>,   and <FinancialAid.US>.   Therefore, Respondent claims he has definitely been using the domain name <FinancialAid.biz> in good faith and for a bona fide business purpose. The reason that <FinancialAid.biz> is not currently active is due to the fact that the domain currently has a “Lock” on it. Any of the other names listed above point to <Scholarship.info>.

              

In response to confusion caused to a person trying to locate information on Financial Aid, Complainant may own the name <FinancialAid.com> but if someone types in <FinancialAid.net>, <FinancialAid.org>, or any other extension, they will find several websites that are not affiliated with <FinancialAid.com>.

              

In summary, Respondent claims: he has a legitimate right to use the name <FinancialAid.biz>; the name Financial Aid is a generic term and is not associated with any one company; no one has a trade mark or service mark on the term Financial Aid; and he is using the name in good faith as he operates a website offering information on obtaining financial aid and scholarships.

FINDINGS

                              Solutions Advancing People, Inc. registered the <FinancialAid.com> domain name

on June 14, 2000. On January 1, 2001, Complainant FinancialAid.com LLC entered into a Domain Name Transfer Agreement, obtaining the exclusive rights to the <FinancialAid.com> domain name. The FINANCIALAID service mark has identified FinancialAid.com LLC as a provider of educational financial assistance services since February 1, 2000.

               Complainant filed a United States application to register the service mark FINANCIALAID.COM for financial services on May 31, 2002. Complainant also filed a United States application to register the service mark FINANCIALAID.COM & Design for financial services on May 31, 2002.

               Respondent received the domain name <FinancialAid.biz> on March 27, 2002. The term “financial aid” is generic and used by many parties. Respondent’s use of the domain name is for bona fide commercial purposes. There is no evidence that the Respondent registered or is using the domain name in bad faith. The Respondent has rights and legitimate interests in 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

            Complainant  filed  an  application  to  register  the  service  mark FINANCIALAID.COM for financial services some two months after Respondent received the domain name <FinancialAid.biz>. Unlike domain name disputes brought under the UDRP, STOP claims require that the disputed domain name be identical to a trade mark or service mark in which the Complainant holds rights. A domain name that is merely confusingly similar to a trade mark (or service mark) cannot not 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 Section 4(a)(i) because its COMMINVEST mark was not identical to “cominvest” or <cominvest.biz>).

               The term “financial aid” is a ubiquitous one used by numerous individuals or businesses not necessarily related to educational or scholarship assistance. Complainant did not establish “protectable rights” in its mark FINANCIALAID.COM . See  Vietnam Venture Group v. cosmos consultin gmbh, FA102601(Nat. Arb. Forum Feb 6, 2002) (dismissing the Complaint because the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the mark identified goods or services unique to the Complainant).     

                       

Respondent’s Rights or Legitimate Interests

              

At the time Respondent received the domain name <FinancialAid.biz> the Complainant’s service mark FINANCIALAID.COM was not registered, nor was there any way the Respondent would have knowledge that Complainant was about to register it.

               The Respondent has an operating web site, <Scholarship.info>, which features ideas and resources for those searching for scholarships and financial aid, along with other related services. Respondent has also obtained a number of domain names of a similar nature to <FinancialAid.biz>, all of which point to the web site. One of these, <FinancialAid.US>, features <FinancialAid.com> on the home page as one of Respondent’s affiliate partners.   

              

Although Respondent may not have made actual use of a registered ”.biz” name prior to the filing of a STOP Complaint, Panels have found that, where the Respondent operated a website at a virtually identical domain name, such use may fulfill the “use of, or demonstrable preparations to use” test of STOP Policy Section 4(c)(ii). See American Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb 24, 2002).                                                               

Registration or Use in Bad Faith

               Some UDRP Panels have held that even general offers to sell, without a specific named price, will satisfy the bad faith element of the UDRP. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., F 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Complainant offered no evidence that the Respondent offered to sell or registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the name to Complainant or its competitors for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. Such evidence is necessary to satisfy the Bad faith requirement of STOP Policy Section 4( b)(i). Nor did the Complainant offer any decisions which might have interpreted Respondent’s conduct as bad faith.

             STOP claims differ from UDRP claims in one very significant and fundamental way. Unlike the UDRP, under STOP when a registrant (Respondent) registers a domain name for which an IP Claim was previously filed, the registrant is notified of  the  potential for trademark infringement before being allowed  to proceed with the registration. One Panel has held that registration of a domain name despite such notice, in appropriate circumstances, could “almost preclude any possibility of registration in good faith of a domain name. See Gene Logic Inc. Bock, FA 103042 (Nat. Arb. Forum Mar.4, 2002).  In this case, the registration did not occur until after the domain name had been received.   

DECISION

        The Complainant having failed to meet the requirements of the STOP Policy and the Panel having found the registration not to be in bad faith, the domain name “<FinancialAid.biz>” shall be retained by the Respondent, and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Louis E. Condon, Panelist
Dated: July 31, 2002

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