START-UP TRADEMARK OPPOSITION POLICY

DECISION

Continental Airlines Inc. v. Emmett Hodges Jr.

Claim Number: FA0204000109725

PARTIES

Complainant is Continental Airlines Inc., Houston, TX (“Complainant”) represented by W. Scott Brown, of Vinson & Elkins L.L.P.  Respondent is Emmett Hodges Jr., Loveland, OH (“Respondent”) represented by Scott J. Fields, of Obermayer Rebmann Maxwell & Hippel LLP.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <businessfirst.biz>, registered with Register.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.

James A. Carmody, Esq., 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 16, 2002; the Forum received a hard copy of the Complaint on April 18, 2002.

On April 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 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 May 8, 2002.

On May 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Carmody, Esq., as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it is the owner of the name, trademark and service mark, “business first” and many variations thereof.  On one of its many U.S.A. trademark registrations, a date of first claimed use of July 2, 1985 is indicated.  Complainant alleges that Respondent has registered <businessfirst.biz>, the domain name at issue, and that this domain name is identical to the trademark in which Complainant has rights.  Further, Complainant alleges that the Respondent is not commonly known as “businessfirst” and that he has not used or made demonstrable preparations to use the domain name at issue in the bona fide offering of goods or services.  Finally, Complainant says that Respondent’s registration was in bad faith due the fact that “businessfirst” is a famous mark associated with Continental Airlines and, accordingly, the Respondent must have known that the registration of the domain name at issue would disrupt the business of Continental Airlines.  Also, it is alleged, without support, that the Respondent intends to attract, for commercial gain, internet users to his website or another linked on-line location by creating a likelihood of confusion with Complainant’s trademark and service mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or linked on-line location or of a product or service offered there.

B. Respondent

The Respondent does not deny that the domain name at issue is identical to a trademark or service mark in which the Complainant holds rights.  However, Respondent alleges that there are many uses of the mark “businessfirst”, some of which enjoy U.S.P.T.O. registration, and that, accordingly, the Complainant holds rights in the trademark and service mark it shares with many others, including the Respondent.  Further, the Respondent alleges that it has been using “business first” in connection with the heating, ventilation and air conditioning (HVAC) business for two years (presumably well before any notice of a dispute with respect to its anticipated use of the domain name at issue).  The Respondent notes that others than the Complainant or the Respondent own the top level domains: <businessfirst.com>, <businessfirst.net>, and <businessfirst.org>, without apparent objection from Complainant.  Thus, infers the Respondent, it is not he who has prevented the Complainant from obtaining a domain name companion to its trademark.  Finally, Respondent denies any bad faith registration of the domain name at issue which is being used in support of a slogan in his HVAC business.

FINDINGS

The Complainant has clearly demonstrated that the Respondent has registered the domain name at issue and that it is identical to an extensively registered trademark and service mark in which the Complainant holds rights.  It matters not that “.biz” has been added to that mark.  .  See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted rights).

However, the Respondent has provided proof of numerous other U.S.P.T.O. and assumed name registrations of “BUSINESS FIRST” in banking services, educational services, computer e-commerce software, copier supplies, art furniture, consulting services, business consultation, long distance telephone services, etc.  Simply put, Complainant’s trademark and service mark may have some ability to identify the source or sponsorship of goods and services in the airline industry, but it shares the mark with numerous other legitimate users in other fields of endeavor, including the Respondent in the HVAC business.  It is noteworthy that the Complainant is not the registrant of the domains: <businessfirst.com>, <businessfirst.net>, and <businessfirst.org>.

There is authority for the proposition that a Respondent cannot depend for its demonstration of use or interest in a domain name on the activity of a third party.  See Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002) (finding that a Respondent cannot assert the rights of a third party to demonstrate rights or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii) when that third party has not formally intervened in the proceeding.  However, in this case, the Respondent has provided evidence in the form of advertising copy to demonstrate its own prior use and legitimate interests in the domain name at issue.

Accordingly, it can hardly be said, in light of the prior use, that the Respondent registered <businessfirst.biz> in bad faith.

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.

Complainant’s Rights in the Mark

This Panelist finds that Complainant does have rights and legitimate interests in a trademark and a service mark which is identical to the domain name at issue.

Accordingly, Paragraph 4(a)(i) of the STOP Policy has been satisfied by Complainant.

Respondent’s Rights or Legitimate Interests

This Panelist finds that Respondent has proven rights and legitimate interests in respect of the mark or domain name at issue. Accordingly, Paragraph 4(a)(ii) of the STOP Policy has not been satisfied by Complainant.

Registration or Use in Bad Faith

This Panelist finds that Respondent did not register the domain name at issue in bad faith.

Accordingly, Paragraph 4(a)(iii) of the STOP Policy has not been satisfied by Complainant.

DECISION

The Panelist finds that the Complainant has not satisfied all of the requirements of Paragraph 4 of the STOP Policy and, accordingly, it is ordered that the domain name at issue, <businessfirst.biz>, not be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist
Dated: June 1, 2002

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