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Generic Top Level Domain Name (gTLD) Decisions |
Burke Inc v. Leader Technologies LLC
Claim Number: FA0112000102822
PARTIES
The
Complainant is Burke Inc,
Cincinnati, OH (“Complainant”). The
Respondent is Leader Technologies LLC,
Westerville, OH (“Respondent”) represented by Marcus D. Dunn, of Zacks Law
Group, LLC.
The
domain name at issue is <digitaldashboard.biz>,
registered with Domain People.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge, has no known
conflict in serving as
Panelist in this proceeding.
James
Alan Crary 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 12, 2001; the
Forum received a hard copy of the Complaint
on January 9, 2002.
On
January 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 4, 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 February 25, 2002.
On March 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James Alan Crary
as the single Panelist.
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
A.
Complainant
The
Complainant asserted that it owned the registered trademark DIGITAL DASHBOARD
and that it therefore had exclusive rights to the
name.
Complainant
then asserted that in addition to filing an IP claim for <digitaldashboard.biz>,
the .biz domain name was pre-registered with the registrar, Net Wizards, Inc.
on June 1, 2001. Net Wizards, Inc., it was asserted,
never submitted this
domain name to the registrar. Had this been done, Complainant would have been
awarded the domain name since
it was the trademark holder. The Complainant
alluded to a communications problem between it and Net Wizards, Inc.
B.
Respondent
Respondent
noted that the Complainant had failed to prove any of the three elements set
forth in paragraph 4(a) of the STOP Policy.
Respondent
maintained that the Complainant failed to state a dispute or claim as it
related to the .biz top-level domain. The Complainant
lists
<digitialdashboard.com>, as the subject of the complaint,
noting that the purpose of the STOP proceedings is to resolve disputes specific
to the registration
of .biz top-level domain names only.
The
Complaint was also deficient in that it did not specify the “goods or services”
with which the alleged mark were used. Nor did
the Complaint state if there
were goods or services used in connection with the mark. Respondent maintained
the Complaint should
be dismissed without any further consideration.
The
Complainant failed to allege specific factual or legal grounds, merely alleging
that it “owns” the registered trademark. The fact
that the Complainant had
registered the servicemark “DIGITAL DASHBOARD” does not by itself prove that
the Complainant had right to
attain and maintain such a trademark or service
mark.
The
Complainant failed to provide any information or evidence as it related to the
three elements which Complainant was required to
prove under the STOP Policy.
See STOP Policy 4(a) and STOP Rule 3(c)(ix). The complaint should therefore be
dismissed because of
the lack of specificity of facts which would allow the
Panel to decide the dispute.
Respondent
acknowledged that the Complainant had registered and used <digitaldashboard.com>
but that domain name was not the
subject of the dispute. Respondent urged that
its <digitaldashboard.biz> would not cause confusion or divert
customers, current or future.
The
Respondent was in the business of software development of business applications
whereas the Complainant was a business consultant
in fields not including
software or technology in general.
The
Respondent’s use of Digital Dashboard
in its materials presentations and components of its products predates
Complainant’s alleged first use in the public domain by more
than 12 months. In
addition to Digital Dashboard,
Respondent used Digital Score Cards,
Digital Leader Board, and Digital Project Board.
Further
details concerning the Respondents use of Digital
Dashboard in various states between 1997 and the present were set forth.
Respondent
noted that the Complainant did not allege or contend that it had rights or
legitimate interests in respect to the domain
name <digitaldashboard.biz>.
It’s right to the DIGITAL DASHBOARD mark was not exclusive since there were
several companies that utilize the mark at their own
web sites to describe
their businesses and services.
Respondent
went on to describe plans for future software releases. <Digitaldashboard.biz>
would be combined with Respondents 450 domain names, 2000 copyrights, and over
400 trademarks in advancing and refining its software
offerings.
The
Respondent noted that the Complainant does not allege nor contend that the
Respondent had registered or used the domain name in
bad faith. Respondent
maintains that it registered the domain name in good faith for the
dissemination of its products to the public
at the appropriate time.
Respondent’s
business did not compete with the Complainant’s services. There was no showing
that the domain name was registered with
the intent to confuse and Respondent
maintained that there was no showing of current confusion with Complainant’s
alleged marks.
Respondent denied that it registered the domain name with the
intent to sell it to anyone or other bad faith use under the STOP Rules.
1. The Complainant fails to state the
necessary elements to establish entitlement to relief under the STOP Policy.
2. The Respondent has rights and legitimate
interests in the disputed domain name <digitaldashboard.biz>.
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.
STOP
Rule 3(c)(viii) requires that the Complaint specify the trademark(s) or
servicemark(s) on which the complaint is based and, for
each mark to describe
the goods or services, if any, with which the mark is used (the Complainant may
also separately describe other
goods and services for which it intends, at the
time the Complaint is submitted, to use the mark in the future).
STOP
Rule 3(c)(ix) requires the Complaint to describe, in accordance with the
Policy, the grounds on which the Complaint is made including,
in particular,
(1) the extent to which the domain name(s) is/are identical to a trademark or
servicemark in which the Complainant
has rights; (2) why the Respondent should
be considered as having no rights or legitimate interests in respect of the
domain name(s)
that is/are the subject of the Complaint; and (3) why the domain
name(s) should be considered as having been registered or used in
bad faith …
The
Complaint wholly fails to meet the criteria set forth in the STOP Rules above
cited. The Complaint consists of a bare allegation
that it holds a trademark to
DIGITAL DASHBOARD without any supporting evidence or proof. Complainant does
not describe the goods
and services if any used in the past or planned for the
future. The Complaint does not describe the manner in which it acquired
trademark
rights, whether it was registered, based on common law, or acquired
from others. Further, the Complaint does not address any of the
three elements
necessary to establish transfer of the disputed domain name.
The
Panel will not erect castles in the air in order to make a case hypothetically
where the Complainant wholly fails to meet its
obligations under the Rules to
set forth the grounds on which the Complaint is based and the supporting
evidence. Since the Complainant
has not provided any evidence of rights in any
trademark or servicemark, the first condition of paragraph 4(a) of the STOP
Policy
was not met, and the Panel need not consider the matter further. See
Powrachute, Inc. v. Buckey Industries AF-0076 (e-Resolution, May 30,
2000).
The Respondent met the compliant with a
detailed Response which described its business activities, and its prior use of
Digital Dashboard in connection
with its product offering. Respondent established that it has used the term in
connection with its software products
and services and other offerings in
interstate commerce as well as internationally. Its non-competing goods and
services were offered
in commerce using the DIGITAL DASHBOARD name twelve (12)
months prior to Complainant’s registration. The nature of the rights and
legitimate interests was set out appropriate detail in the Response. It was
supported amply with documentation in the exhibits.
The Panel concluded that the greater
weight of the evidence supported the finding that Respondent had rights and
legitimate interests
in the disputed domain name.
DECISION
Since the Panel concluded that
Complainant made an insufficient showing to establish rights in the DIGITAL
DASHBOARD mark, and that
Respondent had rights and legitimate interests in <digitaldashboard.biz>,
the Panel directs that the Complaint be dismissed and that subsequent
challenges to this domain name as against the Respondent shall not be
permitted.
James Alan Crary Panelist
Dated: March 29, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/476.html