START-UP TRADEMARK OPPOSITION POLICY

DECISION

Panago Pizza Inc. v. Ioannis Panago

Claim Number: FA0204000110773

PARTIES

The Complainant is Panago Pizza Inc., Abbotsford, BC, CANADA (“Complainant”), of Panago Pizza Inc.  The Respondent is Ioannis Panago, Delta, BC, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <panago.biz>, registered with Namescout.com.

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.

Bruce E. Meyerson 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 April 22, 2002; the Forum received a hard copy of the Complaint on April 23, 2002.

On April 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 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 May 8, 2002.

On May 30, 2002, pursuant to STOP Rule 6(b), the Forum appointed Bruce E. Meyerson as the single Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            Complainant acknowledges that Respondent’s last name is Panago.  Complainant contends, however, that because Respondent also owns the domain name <panago.info>, it is therefore unnecessary for Respondent to have yet another website bearing the same name.  Complainant also contends that consumers may inadvertently go to Respondent’s website and this would be damaging to Complainant because “Mr. Panago, or a member of his immediate family residing at the same address, has popular political affiliations from which Complainant would prefer to distance itself.”

B. Respondent

Respondent, Ioannis Panago, asserts that he intends to use the disputed domain name to expand his financial planning business.  He claims that there is “no law in this world that states that one company or individual can be the only holder of a domain name.”

FINDINGS

Complainant is the owner of <panago.com>, a website used to promote its national franchise business and the products it sells through its franchised outlets.  Complainant holds one Canadian trademark registration identical to the disputed domain name, and six United States trademark registrations, also identical to the domain name at issue.  The Respondent’s last name is Panago.  Mr. Panago is a financial planner and uses the website to promote his financial planning practice.

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

As Complainant holds one Canadian trademark registration identical to the disputed domain name, and six United States trademark registrations, also identical to the domain name at issue, Complainant has “rights” in the mark.

Rights or Legitimate Interests

Respondent currently utilizes an affiliated domain name, <panago.info>, and plans to use the contested <panago.biz> domain name as an additional tool in his career as a financial planner.  Respondent contends that he will be able to expand his insurance business by having a personalized presence on the Internet, thus evidencing a bona fide offering of services under STOP Policy ¶ 4(c)(ii).

Respondent has legitimate interests and rights in the contested <panago.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii) because it reflects his surname. See G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and legitimate interests in the domain name, where it reflects the initials of his first and middle name, combined with its entire last name); see also G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name).

Complainant’s objection to the unstated political ideology of Respondent or his family is an insufficient reason to grant Complainant exclusive rights over the mark in “cyberspace.”  Moreover, Respondent’s business differs substantially from that of Complainant so that the goods and services remain distinct.  See Philippe Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum May 17, 2000) (finding that respondent has rights and legitimate interests where complainant failed to show that he should be granted exclusive use of a domain name as many other organizations use the generic term);  see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that respondent has a legitimate interest to use a trademark or domain name in which others hold an exclusive right in relation to different goods and services,  providing they are sufficiently distinct from those of others so as to distinguish the goods or services of respondent).

Having found that Respondent has legitimate interests in the domain name, it is unnecessary to consider the issue of bad faith.

DECISION

The Complaint is dismissed.

Bruce E. Meyerson, Panelist

Dated: June 4, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/813.html