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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0112000102957
Complainant
is MDU Resources Group, Inc.,
Bismarck, ND (“Complainant”) represented by Marty A. Francis, Esquire of
Thelen Reid & Priest, LLP. Respondent is Swarthmore Associates, LLC, Pacific Palisades, CA (“Respondent”)
represented by John C. Kirkland, Esquire of Greenberg Traurig, LLP.
The
domain name at issue is <mdu.biz>,
registered with PSI-Japan.
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.
M. KELLY TILLERY, ESQUIRE 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 14, 2001; the
Forum received a hard copy of the Complaint
on December 17, 2001.
On
December 20, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 9, 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 9, 2002.
Complainant
submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7
on January 14, 2002. Respondent also
submitted a timely Additional Submission pursuant to Supplemental Rule 7 on
January 18, 2002.
On February 5, 2002, pursuant to STOP Rule 6(b), the
Forum appointed M. KELLY TILLERY, ESQUIRE as
the single Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant
contends that it owns eight (8) service marks registered with the United States
Patent and Trademark Office as follows:
MARK REGISTRATION# REGISTRATION DATE
MDU 234,1183 4/11/00
MDU 233,8542 4/4/00
MDU 234,1184 4/11/00
MDU
(stylized) 233,8546 4/4/00
MDU
(stylized) 234,5391 4/25/00
MDU
(stylized) 234,5392 4/25/00
MDU
(stylized) 239,1306 10/3/00
MDU
239,9522 10/31/00
Complainant is in the business of
producing and distributing electricity and all of the registrations relate to
this activity.
Complainant contends that an Internet
search and online government record search reveals no evidence that Respondent
has ever used
the term “MDU” as a trademark for any goods or services and that
there is no active site associated with the domain name in question.
Complainant contends that public records
show that Respondent is a California limited liability company established on
June 1, 2001
and that the agent and partner of record for Respondent is John
Kirkland, Esquire, who is also Counsel for Respondent in this action
and the
Administrative Contact for purposes of its domain name in question.
Complainant contends that Respondent has
no trademark registration or pending Applications incorporating the term “MDU”
with the United
States Patent and Trademark Office.
Complainant contends that its Trademark
Investigator found nothing indicating that Respondent has entitlement to use
the name or mark
“MDU”, that there is no telephone directory listing for
Respondent in Pacific Palisades, California, that 754 Swarthmore, Pacific
Palisades, California, Respondent’s address is also the residential address of
John Kirkland, Esquire, Counsel for Respondent and
Respondent’s Administrative
Contact.
Complainant contends that Respondent has
no common law rights in the term “MDU” and that Respondent is not currently in
business utilizing
same.
Complainant contends that the domain name
at issue was registered and/or is being used in bad faith. Complainant contends that this is so because
Respondent has no apparent trademark rights in the term “MDU”, Respondent had
constructive
notice of Complainant’s trademark rights due to the USPTO
registrations and that it is reasonable to assume that Respondent had actual
knowledge of the trademark rights of Complainant because Complainant has
operated a website at the address <mdu.com> for several
years. Complainant contends that if Respondent did
not conduct an appropriate search to determine whether anyone else had rights
in the “MDU”
mark, that such failure constitutes bad faith.
Complainant contends that despite
Respondent’s constructive notice of Complainant’s trademark rights and
Respondent’s likely actual
notice of Complainant rights, Respondent registered
the domain name in question and represented in its Application that the domain
name will not infringe upon or otherwise violate the rights of any third party.
Complainant contends that it’s
representative informed Counsel for Respondent that Complainant owns trademark
rights in “MDU”, operates
a website at <mdu.com> and wanted to acquire
the domain name in dispute. Complainant
contends that Respondent’s representative, Mr. Kirkland, responded that he
registered a “block” of domain names for various
clients, that he could not
recall for which client this domain name was registered and that he would
inquire and respond to the undersigned.
The next day Mr. Kirkland left a voicemail indicating that should
Complainant desire to acquire the domain name, Complainant should
put its best
offer in writing as soon as possible.
Complainant contends that this
constitutes an invitation for an offer to purchase the domain for valuable
consideration in excess
of Respondent’s documented out of pocket costs directly
related to the domain name.
B.
Respondent
Respondent contends that its usage of the
common initials “MDU” in its domain name does not infringement any legitimate
trademarks
of Complainant in that Respondent is using “MDU” as initials for its
own website “mduniversity” which is directed to medical school
students.
Respondent contends that Complainant is
not famous or widely recognized and that they are not the only company that
uses the very
common initials “MDU.”
Respondent contends that the three
letters “MDU” are commonly used initials for many, many things and that there
are other companies
who own trademarks for “MDU” in other classes. Respondent contends that the services to be
provided by it under the <mdu.biz> domain name are in a different
international trademark class and cover completely different services than
those of Complainant.
Respondent contends that it has filed an
Intent to Use Trademark Application (#780,98771) for the mark <mdu.biz>
in Class 41 covering Internet Educational Services, specifically the operation
of an Internet website providing medical school
textbooks and related services
for the education of medical students.
Respondent contends that since the
services offered by Respondent and Complainant are completely different, there
is no likelihood
of confusion and therefore no trademark infringement.
Respondent contends that it acquired the
domain in question for the purpose of operating its own online business. Respondent contends that prior to the
registration of the domain name and long before any notice to Respondent of
this dispute, Respondent
began preparations to use the domain name in
connection with a bona fide offering of goods and services. Respondent has provided a preliminary
website design as an Exhibit.
Respondent contends that all it must do
is to establish legitimate interest in respect of a domain name is to have a
business concept.
Respondent contends that its “mduniversity” is an absolutely
legitimate business concept which Respondent has every right to commercially
exploit.
Respondent contends that Plaintiff has failed
to produce any documentary or other evidence establishing bad faith by
Respondent. Respondent contends that
prior to registration of the <mdu.biz> domain name, Respondent’s
Counsel conducted a full trademark search and advised Complainant that it was
legally entitled to use
“MDU” in its domain name. Respondent contends that it acted on reasonable reliance on the
advice of its counsel and therefore cannot be said to have acted in
bad faith.
Respondent contends that it did not
register the domain name in order to prevent
Complainant from reflecting its trademark in a corresponding domain
name. Respondent contends on the
contrary that Complainant already has a domain name <mdu.com> that
reflects its trademark.
Respondent contends that it did not register
the domain name primarily for purposes of selling the domain name registration
to Complainant
or any competitor of Complainant for valuable consideration in
excess of Respondent’s documented out of pocket costs directly related
to the
domain name. Respondent contends that
it was in fact Complainant who contacted Respondent and made an unsolicited
offer to buy the domain name.
Respondent contends that it advised
Complainant that Respondent had acquired the domain name for the purpose of
operating Respondent’s
own online business and had no particular interest in
selling it. Respondent further contends
that it did not register the domain name primarily for the purpose of
disrupting the business of Complainant
for Respondent and Complainant are not
competitors at all.
Respondent contends that it did not
register the domain name to intentionally attempt to attract, for commercial
gain, Internet users
to Respondent’s website by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation
or
endorsement of Respondent’s website.
Respondent contends that its market is very narrow-medical students and
that Respondent would in no way benefit from any confusion
if there were to be
any at all.
Respondent also requests that the Panel
make a finding of “reverse domain name
hijacking.”
C.
Additional Submissions
Complainant contends that Respondent
is not “using” MDU in any sense at all since there is no active website. Complainant contends that Respondent’s
“mdunversity” appears to be a transparent ruse that further supports the bad
faith of Respondent. Complainant points
out that Respondent’s USPTO Intent to Use Application was filed on December 17,
2001 after the service of the Complaint in this action and thus does not
support Respondent’s claim of intent to operate such a business prior
to the
filing of the Complaint.
Complainant contends that Exhibit “A” to
Respondent’s response is not what Respondent contends it is, but is rather a
“hurried effort
to create evidence after the fact.” Complainant contends that Respondent’s “initial website design”
is merely a homepage of only two (2) paragraphs that are specific
to the stated
business plan followed by two alphabetical lists of courses and topics. The remainder of this site is boilerplate
website language. Complainant contends
that the numerous internal inconsistencies and contextually inappropriate
elements in Respondent’s alleged “initial
website design” betray that it is a
hurried retrofit of language from a different website and it strongly suggests
that Respondent
did not make a bona fide preparation to use the
domain name before notice of this dispute.
Complainant contends that Respondent has
offered no evidence in support of its claim that its counsel did a full
trademark search
and advised Respondent that it was entitled to use “MDU.” Complainant contends that its Counsel
requested of Respondent copies of any such trademark searches but that
Respondent refused to
provide same.
Complainant contends that it is not
required to prove trademark infringement but rather only the three (3) elements
of the STOP Policy.
Complainant contends that Respondent’s
“mdunversity” is merely artifice and/or a gimmick and is evidence of Respondent
not being candid
with the Panel or Complainant and further evidence of
Respondent’s bad faith.
Complainant contends that there is no
evidence of record to support a claim of “reverse domain name hijacking.”
Respondent
Respondent contends that Complainant has
merely made wild and unsupported accusations seeking to place the burden on
Respondent to
prove a negative.
Respondent contends that it is developing
a bona fide business use for the domain name and that is initial
website design is appropriate and proper.
Respondent contends that it is entitled to a reasonable amount of time
to develop the business based upon its domain name.
Respondent further contends that
Complainant has failed to submit any evidence of Respondent’s alleged bad
faith. Respondent contends that a
Memorandum of Respondent’s Counsel advising Respondent before the domain name
application was filed that
it conducted a full trademark search and Respondent
was legally entitled to use “MDU” in its domain name is attached as Exhibit
“A”.
Respondent contends that Complainant
acted in bad faith in bringing the Complaint because it made no good faith
effort to contact
Respondent and amicably resolve any alleged issues before
filing the Complaint, Complainant lied about its true intentions falsely
stating
that it wanted to purchase the domain name when in fact it was attempting to
manufacture evidence against Respondent and
lastly that Complainant’s Complaint
is frivolous and could not possibly be asserted in good faith.
Thus, Respondent requests a finding of
“reverse domain name hijacking” be made.
1) Complainant
has met its burden to prove by a preponderance of the competent, credible and
admissible evidence that the domain name
in question is identical to service
marks in which Complainant has rights.
2) Complainant
has met its burden to prove by a preponderance of the credible, competent and
admissible evidence that Respondent has
no rights or legitimate rights in
respect of the domain name.
3) Complainant
has met is burden to prove by a preponderance of the credible, competent and
admissible evidence that the domain name
has been registered or is being used
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 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 Complainant has rights; and
(2) 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 has presented evidence that
it owns four (4) valid, live Federally-registered service marks for “MDU” and
four (4) valid,
live Federally-registered service marks for stylized versions
of “MDU.” Respondent does not dispute
this. Neither does Respondent dispute
that those registered service marks for “MDU” are identical to the domain name
in question. Respondent merely contends
that for a variety of reasons Respondent’s use of “MDU” does not infringe on
the marks of Complainant. This Arbitrator
need not decide that issue for the STOP Policy only requires that a Complainant
prove that the domain name is identical
to a trademark or service mark in which
the Complainant has rights, not that the domain name infringes on any
such trademark.
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the competent, admissible and
credible evidence
that the domain name in question is in fact identical to
service marks in which Complainant has rights.
The facts of record regarding
Respondent’s “use” are curious.
Respondent is a California limited liability company. The agent and partner of record for
Respondent is John C. Kirkland, Esquire, who is also Counsel of Record for
Respondent in this
proceeding and Respondent’s Administrative Contact for
purposes of its domain name registration.
The official address of Respondent is also the residence of John C.
Kirkland, Esquire. The name of no other
person appears in connection with or on behalf of Respondent Swarthmore
Associates, LLC in any Exhibit or Pleading
presented in this matter. While Respondent’s Pleadings and at least
one Exhibit have Mr. Kirkland referring to his client, Respondent, in the third
person,
this Arbitrator can only conclude from all of the submissions that
Swarthmore Associates, LLC is in fact synonymous with John C.
Kirkland,
Esquire. Of course, there is nothing
whatsoever improper about this or in Mr. Kirkland representing an entity in
which he has some or all interest.
However, it does require that the credibility of all matters submitted
on behalf of Respondent be judged solely by the credibility
of Mr. Kirkland
himself.
Respondent attempts to establish that
before it had notice of this dispute, it made demonstrable preparations to use
the domain name
in connection with a bona fide offering of goods
and services. A number of facts of
Record make this very difficult to believe: (1) Mr. Kirkland’s response to the
telephone inquiry of Complainant’s
Counsel, (2) that there is no telephone
listing for Respondent is Pacific Palisades, California, (3) that there is no
other person
apparently involved in Respondent’s business, (4) that there is no
identification of who designed the “initial website design” or
when, (5) that
Exhibit “B” purportedly dated June 15, 2001 to Respondent’s Additional Submission
is from Mr. Kirkland’s law firm
(not an individual lawyer) to Swarthmore
Associates, L.L.C., (6) that Respondent’s Intent to Use Application was filed after
service of this Complaint, and (7) that Respondent’s “initial web design” is
very brief and appears hurriedly cobbled together.
Based upon the Record, this Arbitrator
cannot conclude that there is sufficient credible evidence of record to support
Respondent’s
contention.
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the competent, credible and
admissible evidence
that Respondent has no rights or legitimate interests in
respect of the domain name.
While Respondent
cleverly responded to inquiries of Complainant’s Counsel regarding purchase of
the domain name, this Panelist does
not believe the responses were quite clever
enough. On the contrary, the responses
and what appear to be manufactured documents and claims are evidence that
Respondent registered the
domain name primarily for the purpose of selling,
renting or otherwise transferring the domain name registration to Complainant
or
to another for valuable consideration in excess of Respondent’s documented
out of pocket costs directly related to the domain name. See STOP Rule 4(b)(i).
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the competent, credible and
admissible evidence
that Respondent registered the domain name in bad faith.
The domain name <mdu.biz>
shall be transferred from Respondent to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Philadelphia, PA
Dated: February 26, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/302.html