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Generic Top Level Domain Name (gTLD) Decisions |
Seagate
Technology LLC v. TC Services
Claim Number: FA0112000102782
PARTIES
The Complainant is Seagate Technology LLC, Scotts Valley, CA (“Complainant”) represented by Diane Mason, of Flehr Hohbach Test Albritton & Herbert. The Respondent is TC Services, Gary, IN (“Respondent”).
The domain name at issue is <seagate.biz>, registered with Bulkregister.com, 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.
Tyrus R. Atkinson, Jr., 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 10, 2001.
On December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 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 December 26, 2001.
On December 31, 2001, Complainant submitted an additional submission in a timely manner in accordance with the Forum’s STOP Supplemental Rule 7.
Respondent submitted a timely additional submission in accordance with Forum STOP Supplemental Rule 7 on January 7, 2002.
On January 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
Complainant is Seagate Technology LLC of Scotts Valley, California.
Complainant is in business in connection with the field of computer related products.
Since at least 1981, Complainant, through it predecessors in interest, adopted and began use in interstate commerce of the marks Seagate Technology and Seagate for computer disc drive apparatus.
Since adoption and first use, Complainant and its predecessors in interest extensively promoted the marks Seagate Technology and Seagate.
Complainant holds the United States Patent and Trademark Office Registration No. 1,269,032 for the Trademark SEAGATE with registration date May 6, 1984; the Trademark SEAGATE registered December 17, 1996 bearing registration number 2,024,197; and registration number 2,407,743 for the Trademark, SEAGATE, dated November 18, 2000.
Complainant alleges that SEAGATE is a registered trademark owned by it in a least forty foreign countries and the European Community.
Complainant’s trademark, SEAGATE, is identical to Respondent’s domain name, <seagate.biz>.
Registration of the domain name <seagate.biz> by Respondent will cause great and irreparable damage to Complainant by a likelihood of causing confusion, mistake, and deception on the part of the public and would cause an erroneous assumption on the part of the public that Respondent’s web site was sponsored by Complainant.
Respondent has no rights or legitimate interests in the domain name <seagate.biz>.
Respondent registered or used the domain name in bad faith since Respondent does not own any trade or service marks identical to the domain name; Respondent has not previously used the domain name in connection with a bona fide offering of goods or services; and Respondent has not been commonly known by the domain name.
Respondent intends to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
Respondent is TC Services, Inc. of Gary, Indiana.
Respondent provides administrative services to trucking and logistics companies.
Among its clients is Seagate Transportation Services, Inc. for which its services included reservation of a website with the domain name of <seagate.biz>.
Seagate Transportation was incorporated in the State of Indiana in September 1983, and since that time has maintained operating offices in Toledo, Ohio. Since its incorporation, Seagate Transportation has operated as a trucking company, transporting general commodities in interstate transportation under the authority issued by the Interstate Commerce Commission and the United States Department of Transportation.
The name “Seagate” is not unique to either Complainant or Respondent, nor is it synonymous only with computer services.
Seagate Transportation has continuously and exclusively operated under the name of Seagate. Its website will be exclusively devoted to its trucking business, which it has spent twenty years developing and promoting among the customers for which it transports freight.
Respondent had no knowledge of a company operating under the name of “Seagate Technology” until served with the Complaint in this proceeding.
Respondent denies that it intends to use the website to create confusion with Complainant’s business, and it denies that it plans to sell, rent or transfer the domain name. Respondent’s sole intention in registering the domain name <seagate.biz> is to promote its interstate trucking business.
C. Additional Submissions
Complainant’s Additional Response.
Respondent has not shown that there is any corporate affiliation between itself and the alleged real party in interest, Seagate Transportation. The only relationship shown to exist between Respondent and Seagate Transportation is a commercial relationship of service provider and client. Respondent’s unsupported allegations regarding the use of the mark SEAGATE by Seagate Transportation should not create a presumption of legitimate use of the mark SEAGATE by Respondent. Only a real party in interest should be allowed to assert rights in a domain name. To allow otherwise would allow cybersquatters with bad faith intent to use, register, warehouse and/or to traffic in domain names. Respondent, should it prevail in this proceeding, could seek to market the domain name to someone other that Seagate Transportation. Accordingly, Respondent should not be allowed to assert rights in the domain name <seagate.biz> on behalf of Seagate Transportation or any other entity.
Respondent’s Additional Response.
The services that Respondent provides to Seagate Transportation in assisting it to obtain a website was no different than that provided by numerous other companies whose services include providing and developing websites. Respondent has never sold any of the names that it has reserved.
The companies, Seagate Technology, LLC and Seagate Transportation, Inc., are so different in their services that no confusion could result from their website designations.
Complainant acknowledges that it already holds the designation of <seagate.com>. It would seem that Complainant is the one attempting to monopolize website designations.
1. Complainant is a well-known company, which has done business in the field of computer related products since 1981.
2. Complainant holds trademark rights in the name SEAGATE for its disc drive apparatus, software and related products by registrations with the United States Patent and Trademark Office all of which predate the registration by Respondent of <seagate.biz>.
3. Complainant has rights and legitimate interests in the mark, SEAGATE.
4. Complainant’s mark, SEAGATE, and the domain name <seagate.biz> are identical.
5. Respondent is an organization that provides administrative services to trucking companies. The inference is made that Respondent is a corporation.
6. Respondent has a client trucking company bearing the name Seagate Transportation Services, Inc.
7. On November 19, 2001, Respondent registered the domain name <seagate.biz>.
8. Respondent has no rights or legitimate interests in the name SEAGATE or the domain name <seagate.biz>.
9. Complainant has failed to prove that Respondent registered or is using the domain name 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 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.
Under the Start-up Trademark Opposition Policy and Rules for .BIZ, the Complainant carries the burden of showing that the domain name in dispute is identical to a trademark in which the Complainant has rights. see Rule 4(a)(i). The trade name SEAGATE is identical to the domain name <seagate.biz>. see Policy, Paragraph 1. The second requirement that Complainant must show is that it has rights in the domain name. Complainant proves that it has trademark registrations with the United States Patent and Trademark Office for the trademark, SEAGATE. All of these registrations were made prior to the time Respondent registered <seagate.biz>. Complainant has actively operated under and promoted the trademark over a long period of time. Complainant has shown, by proper submissions, that it has rights in the trademark, SEAGATE.
In order to prevail in this proceeding, Complainant must show that Respondent has no rights or legitimate interests in respect of the domain name. see Policy, Paragraph (4)(ii).
Complainant shows that it never authorized or licensed Respondent to use Complainant’s trademark for any purposes. Complainant has rights and interests in the trademark by its continuous use of it and the registrations of the trademark as required and permitted by law. Complainant contends that it has exclusive right to use the trademark. See America Online, Inc. v. Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000). Complainant contends that Respondent has never been known as SEAGATE, and Respondent admits that it has never been known as SEAGATE.
As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name <seagate.biz>, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and legitimate interests in the domain name by any of the methods set out in Paragraph 4(c) of the Policy.
Respondent makes no attempt to show rights and legitimate interests for itself.
Respondent contends that it proves all three methods set out in Paragraph 4(c) in that a third party corporation with which Respondent has some contractual arrangement has common law rights in the trademark or service mark SEAGATE, that the third party corporation has used a name corresponding to the domain name in connection with a bona fide offering or services, and that the third party corporation has been commonly known by the domain name.
Complainant responds to this argument by contending that Respondent must show rights and legitimate interests in itself, not a third party corporation for which Respondent is allegedly acting. Complainant further argues that Respondent has not shown that there is any corporate affiliation between itself and the alleged real party in interest, Seagate Transportation. The only relationship shown to exist between Respondent and Seagate Transportation is a commercial relationship of service provider and client. Complainant further contends that Respondent’s unsupported allegations regarding the use of the mark SEAGATE by Seagate Transportation should not create a presumption of legitimate use of the mark SEAGATE by Respondent. Only a real party in interest should be allowed to assert rights in a domain name, it is contended. Respondent should not be allowed to assert rights in the domain name on behalf of Seagate Transportation or any other party, Complainant argues. Complainant includes no citation of authority for this argument. But, the reasoning appears to be sound for the purposes of this domain name dispute.
The Policy, in Paragraph 4, requires the holder of a registration to submit to mandatory administrative proceedings involving “Your” domain name to examine whether “You” have rights or legitimate interests. The Policy restricts these proceedings to the holder of the registration who must face examination. No mention is made of third party rights or legitimate interests.
It has been held that a party to a domain name dispute proceeding cannot assert the rights of a third party to satisfy the requirements which the party must establish to prevail in a domain name dispute proceeding. See NBA Properties, Inc. v. Adirondack Software Corporation, D2000-1211 (WIPO Dec. 8, 2000)(holding that a complainant cannot assert rights and interests of another party, as its own, when that other party was not a party to the domain name dispute proceeding). In Koninklijke Phillips Electronics N.V. v. Anpol, D2001-1151 (WIPO Dec. 13, 2001), Respondent contended that he registered the domain name to be used exclusively for authorized dealers of Complainant, thus attempting to use whatever rights and interests such dealers might have in the domain name. The Panel held “Such purpose does not justify…registration of the domain names…” In Hewlett-Packard Company v. Jeff Burgar d/b/a Hewlett Club, FA93564 (Nat. Arb. Forum Apr. 10, 2000), Respondent’s only claim to legitimate rights and interests was that he was “affiliated” with a third party which was authorized to sell complainant’s products. The majority of the Panel required that Respondent show rights and interests of his own to justify registration of the disputed domain name. In RC Ritzenhoff Cristal AG v. Hiroki Mitsuhashi, D2000-1796, Respondent, as agent, registered a domain name on request of his principal. The Panel did not examine the rights and interests of the principal. “Even if (as claimed by the Respondent) he was asked by the local agent of the Complainant to register the Domain Name, such action does not constitute any legal rights or legitimate interests in the disputed Domain Name and gives the Respondent no rights to register the Domain Name in his own name.”
There have been cases where a third party, claiming to be the beneficial owner of the domain name, who filed a Response and participated in the proceedings as a Respondent and thus consenting to the jurisdiction of the Panel, had the rights and legitimate interests of that Respondent considered. See AT&T Corp. v. W.N.A., a/k/a “Worldwide Network of Attornies” Farouk al Khalifa a/k/a Jaye Rayes and “World of Nettie Atteberry”, D2001-1160 (WIPO Nov. 16, 2001). That factual situation is not present in this case.
Respondent fails to explain why it did not register the domain name in the name of Seagate Transportation, or to transfer the domain name immediately to that company. Respondent submits no affidavit or contract to support its position. Respondent’s case consists of unsupported allegations and nothing more. Respondent is required to support its position by annexing documentary or other evidence upon which it relies. See Rule 5. Respondent submitted no such evidence.
Respondent is found to have no rights or
legitimate interests in the domain name <seagate.biz>.
To prevail in this proceeding, Complainant must prove Respondent’s bad faith
registration or use of the domain name. Complainant contends that Respondent has
registered the 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 documented out-
of-pocket costs. Complainant further contends that Respondent intends to attract, for
commercial gain, Internet users to Respondent’s web site or other on-line location
by 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 or of a
product or service on Respondent’s web site or location. If these circumstances can
be shown,
Complainant is entitled to prevail. see
Start-Up Trademark Opposition Policy,
Paragraph 4(b)(i)(iv).
In support of these two grounds, Complainant contends the issues and proofs that are applicable to the issue of legitimate rights and interests of Respondent. Respondent was
found to have no legitimate rights and interests. Complainant offers none of the proofs
ordinarily associated with the issue of bad faith.
To prove that a Respondent has registered a domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to Complainant
or to a competitor, satisfactory proof must be presented. No evidence is presented to
show that Respondent’s purpose was to sell or transfer the domain name to Complainant.
The only evidence is Respondent’s admission that it intends to transfer the domain name
to a client. There is no evidence that the client is a competitor of Complainant. The only
evidence is that the client is a trucking company, transporting general commodities in
interstate transportation. The issue as to whether the entity in question is a competitor
of Complainant must be determined by the facts and circumstances of each individual
situation presented. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7,
2000); The Toronto-Dominion Bank v. Boris Karpachev, D2000-1571 (WIPO Jan. 15,
2001). No reasoning is advanced by Complainant to suggest that a trucking company
is or can be a competitor with a business selling computer products and software.
A competitor must generally be found to be an entity that “offers goods or services
that can compete with or rival the goods or services offered by the trademark owner.”
see Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, D2000-1772 (WIPO
Apr. 10, 2001). No showing is attempted by Complainant to show that Respondent
intended to transfer the domain name to a competitor.
Complainant’s second contention of bad faith is that Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its web site by creating
a likelihood of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the web site or location or of a product or service on the
web site. Respondent denies this allegation. Respondent contends that its client
trucking company and Complainant are so different in their services that no confusion
could result from their web site designations. Complainant has offered no evidence of
any sort that goes to prove that Respondent “intentionally” attempts to attract, for
commercial gain, Internet users by creating a likelihood of confusion with Complainant’s
mark. No inference can be drawn from the evidence presented that the trucking company
or Respondent could make commercial gain in their trucking enterprises by attracting
Internet users seeking Complainant’s products and services.
It is recognized that in a STOP proceeding a Complainant may well have difficulty
proving this particular point. But the “intentional” aspect of this point is a requirement of
proof. see Policy, Paragraph 4(b)(iv). Without proof of the “intentional” aspect, a
Complainant
must fail on this issue. see Thomas Cook Holdings Limited v. Vacation
Travel, D2000-1716 (WIPO Jan. 22. 2001).
Complainant
fails to prove that Respondent registered or used the domain name
SEAGATE.BIZ in bad faith.
DECISION
The complaint seeking transfer of the domain name <seagate.biz> from Respondent to Complainant is Dismissed. Subsequent challenges under the Policy
against this domain name shall be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 7, 2002
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