START-UP TRADEMARK OPPOSITION POLICY

DECISION

nCUBE Corporation v. Benn Dullard

Claim Number: FA0112000102759

PARTIES

The Complainant is Jeff Winn of nCUBE Corporation, Beaverton, OR (“Complainant”).  The Respondent is Benn Dullard, Kingsford, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ncube.biz>, registered with Melbourne IT.

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 December 7, 2001; the Forum received a hard copy of the Complaint on December 6, 2001.

On December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 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 January 8, 2002.

On January 29, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary as the single Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that it is a worldwide leader in providing scalable, streaming media solutions. It combines software and professional services, serving the broadband, IP, DSL, and broadcast video network. It was asserted that more broadband operators worldwide count on Complainant’s streaming media solution.

The Complainant alleged that the dispute domain name <ncube.biz> is confusingly similar to the pre-existing <ncube.com>, owned and operated by Complainant. Respondent was in no way associated with Complainant, an active corporate entity predating “IT d/b/a Internet Names World Wide”, and it’s usage of the mark NCUBE.

It was asserted that Respondent should be considered as operating in bad faith in regards to the registration of the disputed domain name since it was in no way associated with the Complainant, an active corporate entity predating IT d/b/a Internet Names World Wide.

B. Respondent

Response noted that Complainant provided no evidence that it had registered a trademark or service mark for NCUBE. The statement about the business of NCUBE Corporation also was unsupported by evidence that the Complainant had any registration for the business name, company, or service mark including the name NCUBE.

The Respondent asserted that it had strong and legitimate rights and interests in the use of the domain name and denied bad faith in any way.

The Respondent registered the business name NCUBE TECHNOLOGY SOLUTIONS on April 5, 2001. The name had been in use since that time.

Respondent admitted that it had not obtained a registration of the word “NCUBE” as a trademark but it was asserted that Respondent’s commercial business was commonly known by the name NCUBE. The business specialized in providing e-business solutions to various customers, enabling customers to develop a global Internet presence in order to promote sales and reduce business costs.

The Respondent used the name NCUBE in relation to its bona fide offering of goods and services. The Respondent was also the registered owner of the domain name <ncube.com.au>. The site was primary means of initial contact for clients of Respondent.

The domain name was included in all communication between NCUBE TECHNOLOGIES and clients. Its services enabled clients to do work on an up-to-date basis on-line and to follow development costs.

The Respondent denied bad faith, registration or use. The Respondent registered the domain name as part of its on-going interests and use of the word NCUBE as part of its business name, which was registered in Australia.

Respondent denied any attempt to sell, rent, or otherwise transfer the domain name registration. Respondent denied registering the domain name in order to prevent Complainant from reflecting a mark in a corresponding domain name or to disrupt the business of a competitor. He also denied attracting Internet users to its web site by creating a likelihood of confusion with Complainant’s alleged mark.

In the appended materials there was a certificate of registration of business name with the New South Wales Consumer Protection Agency. There was a copy of the Respondent’s listing in the Australian business register. Also included in the appendices was a tax invoice dated July 8, 2001. There were copies of various documents and NCUBE billing information dated July 1, 2001 for one of Respondent’s clients.

FINDINGS

1. The evidence did not support a finding that the Complainant had trademark rights, which were protectable under the STOP Policy.

2. The Respondent domain name holder does business under the name NCUBE TECHNOLOGY SOLUTIONS registered with the New South Wales Consumer Protection Agency, registered April 5, 2001.

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

It was concluded by the Panel that the Complainant made an insufficient showing to establish rights in the mark NCUBE.

The Complaint, which consisted of bare allegations, was not supported with any documenting evidence, and did not meet the burden of proof.

It is incumbent upon the Complainant to establish trademark rights of some kind. No trademark registration was cited by the Complainant. There were no allegations to indicate the registration process had even been undertaken. Further, the Complaint does not set forth any facts that would lead to the finding of a common law trademark. The mark appears to be generic in character, comprising of the letter “n” and the generic word “cube”. It is conceivable that such a mark could be of a distinctive nature but the Complainant sets forth no supporting allegations or evidence.

The Complainant maintains that the Respondent should not be entitled to ownership of the domain name <ncube.biz>, asserting that it was not associated with the Complainant and that its corporate entity predates Respondents registration and use but Complainant provides neither the date it became an entity nor describes the manner in which it became an entity.

Likewise, the Complainant based its assertion of bad faith registration or use on the bare assertion that Respondent was “operating in bad faith with regards to the registration of the domain name “<ncube.biz>”, repeating the allegation with the same confusing language “respondent is in no way associated with nCUBE CORPORATION, owners and operators of <ncube.com> and an active corporate entity predating “IT d/b/a/ Internet Names World Wide and its usage of the mark nCUBE”.

Even assuming that claimant’s domain name registration <ncube.com> predated Respondent’s registration, which was not established by the evidence. The Panel could find no authority to support a finding that Complainant thereby acquired some trademark right protectible under the STOP Policy.

Rights or Legitimate Interests

Respondent submitted his business name registration as well as evidence he was actually engaged in business. The Panel finds Respondent to be an individual who had registered a business name in Australia in compliance with the laws pertaining to the protection of consumers. Other evidence supported a finding that the Respondent was making bona fide offerings of goods and/or services in July 2001, including billings and tax invoices.

The Panel concluded that the Respondent amply supported a finding that Respondent had rights and legitimate interests in the disputed domain name.

DECISION

Since the Panel concluded that Respondent has rights and legitimate interests in the disputed domain name <ncube.biz>, the Complaint is dismissed. No subsequent challenges under this Policy against the domain name <ncube.biz> shall be permitted.

James Alan Crary, Panelist

Dated: February 13, 2002

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