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Generic Top Level Domain Name (gTLD) Decisions |
Dear!Net Online E.K. v. N/A
Claim Number: FA0204000112544
PARTIES
Complainants are Deepak Rajani a/k/a Dear!Net Online e.k., Berlin, GERMANY
(“Complainants”). Respondent is N/A, Australia (“Respondent”).
The domain name at issue is <pre.biz>, registered with Blueberry
Hill Communications, Inc.
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.
Judge Irving H. Perluss (Retired) is the
Panelist.
Complainants have 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 IP Claimants, Complainants
timely noted their intent to file a STOP Complaint against Respondent with the
Registry Operator, NeuLevel
and with the National Arbitration Forum (the “Forum”).
Complainants submitted a Complaint to the
Forum electronically on April 28, 2002; the Forum received a hard copy of the
Complaint
on May 10, 2002.
On May 15, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 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 May 21, 2002.
On June 4, 2002,
pursuant to STOP Rule 6(b), the Forum appointed Judge Irving H. Perluss
(Retired) as the single Panelist.
Transfer of the domain name from
Respondent to Complainants.
A. Complainants
1. The Complainants in this proceedings
are Dear!Net Online e.k., a legal entity, which is active, registered and
practicing under the
laws of Germany, having its principal place of business in
Germany (Anexx 01), and Deepak Rajani.
2. Complainants’ business activities
involved setting up a directory of A to Z known as “The Global website A to Z
directory,” and e-mail
services.
Complainants chose the trademark PRE, which was an abbreviation of
Public Relations Europe.
3. Different domains were offered to the
users of the directory who are able to choose an e-mail of their choice from
the listed domains
(in their subscription area) which offered specialized
newsletters in a specific field. One of
the domains is <Pre.Net> which is active and continues to render services
to their users.
4. Since 2000, Complainants have used the
“PRE” mark extensively on the Internet in its business of Internet domain name
e-mail services
of <Pre.Net>. The
mark is, as a result, known to the public and has become a very valuable asset
of the company as it contains only three letters,
is short and easy to
remember.
5. Thus, Complainants claim legitimate
trademark rights in the word “PRE” due to its use on the website
<Pre.Net> and also due
to the application of a trademark with the
community trademark office at OHIM for the wordmark “PRE” applied on
09/09/99. The registration procedure is
finished including the opposition and publication periods, i.e., Nov. 2001 until Jan. 2002, and Complainants are waiting for
the trademark to be in full effect and force within Europe, which could
be
within one to three months.
6. Respondent owns a company named “Mj
Central PTY LTD” which is a website development company and offers initially a
free service on
the URL and registers and develops websites for the potential
future clients. The Respondent is a
professional who works on a contract basis, earning fees by rendering services
of web design together with registration
and transfer of domain names.
7. The domain name is identical to the
Complainants’ trademark “PRE,” and Respondent has no rights or legitimate
interests in the disputed
domain name and it was registered in bad faith.
8. Complainants further assert that the
Respondent’s own name and his company’s name bear no relationship to the
disputed domain name. Respondent has
never traded under the name “PRE” or any similar name, or does he intend to do
so.
9. Respondent registered the disputed
domain name to create a likelihood of confusion with the Complainants’ mark as
to the source, sponsorship,
affiliation, or endorsement of the Respondent’s
website. Further, the Complainants
charge that any use of the name will inevitably be associated with the Complainants’
business activities
undertaken now and also in the future and this must have
been known to or at least foreseen by the Respondent.
10. It can be inferred that Respondent will
seek a very high price for the disputed domain name, together with web design.
B. Respondent
1. Complainants have not conclusively
proved the ownership of a trademark.
Complainants state that they are “waiting for the registration
certificate to be handed over. . .”, but they do not have it and do
not even know
if and when it will arrive.
Complainants have merely demonstrated an application for and a
confirmation that there is no opposition to the trademark. This is not proof that the Complainants
presently have rights in any trademark or service mark.
2. Respondent does have rights and a
legitimate interest with respect to the disputed domain name
<pre.biz>. The domain name
<pre.biz> is to be used to market Respondent’s services, using the word
“pre” in a number of different industries
involving pre-paying, e.g., mobile phones. Pre-paying is a business technique used to
increase cash flow, tie the customer in and offer discounts to increase sales –
all of
which Respondent uses with his clients.
Respondent works with organizations and businesses to assess and increase
the efficiency of existing processes, focusing on marketing. Respondent also works to leverage
relationships between businesses by trading goods and services, i.e., no cash transactions and do some
business systemization – leveraging internal systems to maximize
profitability. As part of Respondent’s
on-line marketing plan to target a large number of different industries to
offer his services, he has registered
74 generic/dictionary/acronym
<.biz> domain names.
3. Respondent will transfer two domain names
he is not planning to use at no profit and the remaining 72 <.biz> names
Respondent
is using fall into categories of generic and dictionary words and
targeted acronyms, which allows Respondent
specifically to target a great number of industries to offer his
services. Therefore, the registration
of <pre.biz> is for a bona fide offering of Respondent’s services and he
has a legitimate interest
in the disputed domain name <pre.biz>.
4. Respondent’s involvement as a director
of MJ Central has nothing to do with the registration of <pre.biz> and
the other <.biz’s>
he registered.
He personally registered them as an individual, separate from any other
legal entities for use for an entirely different business
and, therefore, all
references to MJ Central in the Complaint are irrelevant.
5. Respondent is not in competition with
Complainants, with respect to goods, services, information and advice, or any
other areas. His use of <pre.biz>
is not intended to confuse the public.
Respondent has no (and never did) desire or intent to imply in any
manner that the Complainants have approved, endorsed, or sponsored
his website
at <pre.biz>. He has little
interest in the free e-mail industry and he had never even heard of the
Complainants until this STOP case. Complainants
have no presence that he knows of in Australia (where Respondent has lived all
his life) and he had never seen or heard
of them before this STOP case. In fact, the top level <pre.com> is
not owned or used by the Complainants.
6. The disputed domain name is for use for
Respondent’s business purposes and is not for sale. The registration of <pre.biz> is totally separate from the
activities of MJ Central and he will not be giving up or selling
any of his
personally registered domain names (i.e.,
all of the <.biz’s> he registered) for the purpose of selling them with a
website.
7. Respondent has no intention to and will
not cause the Complainants any damage at any time. He is not in any sort of competition with Complainants, nor does
he have any desire to be. The public
that is aware of the Complainants’ presence will not try to get the
Complainants’ website by typing in <pre.biz>. According to the
Complaint, Complainants are known as <pre.net> and that is how the public
will arrive at their site. Complainants
also make no mention of <pre.com> or <pre.org>, neither of which
they own and, obviously, neither of which
are causing the Complainants damage
as the public knows not to type those addresses into their Internet browsers to
get to the Complainants’
website.
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 Policy
¶4(a)(i)
The
evidence is sufficient to establish that the Complainants have made an
application to register its mark, and that they have used
the domain name
<pre.net>since the year 2000.
Accordingly, the Panel finds that Complainants do have rights to the
mark. The Panel further finds and
concludes that Complainants’ mark and the disputed domain name are identical.
STOP Policy ¶4(a)(ii)
STOP Policy ¶4(c) functions similarly to
UDRP ¶4(c) in providing ways for a Respondent to demonstrate its rights or
legitimate interests
in a domain name.
Under STOP Policy ¶4(c), the Respondent
may demonstrate its rights or interests by proving:
i. The
Respondent is the owner or beneficiary of a trade or service mark that is
identical to the domain name; or
ii. Before
any notice to the Respondent of the dispute, its use of, or demonstrable
preparations to use, the domain name or a name corresponding
to the domain name
in connection with a bona fide offering of goods or services; or
iii. The
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even though it has
acquired no trademark or
service mark rights.
Respondent has submitted no evidence to
establish that it falls within ¶4(c)(i) or ¶4(c)(iii), and the Panel finds and
concludes that
Respondent has not so demonstrated.
With respect to ¶4(c)(ii), Respondent
contends that he has gone as far as he could in light of the STOP process in
preparing to use
the disputed domain name in advising clients how to increase
sales.
The Panel finds and concludes that this
assertion by Respondent is not sufficient.
STOP Policy ¶4(a)(iii)
Finally, we turn to the bad faith
requirement of STOP Policy ¶4(a)(iii).
STOP Policy ¶4(b) provides four examples
of circumstances that, if proven, will satisfy the bad faith requirement of
STOP Policy ¶4(a)(iii). Paragraph 4(b)
makes clear that these are not the exclusive determinants of bad faith.
To prove bad faith under the STOP Policy,
a Complainant only need prove either
registration or use of the domain
name in bad faith, not both as the UDRP requires. STOP Policy ¶4(b) is otherwise similar to UDRP ¶4(b).
STOP claims differ from UDRP claims in
one very significant and fundamental way.
Unlike the UDRP, under STOP when a registrant (Respondent) registers a
domain name for which an IP Claim was previously filed, the
registrant is
notified of the potential for trademark infringement before being allowed to
proceed with the registration. One
Panel has recognized that registration of a domain name despite such notice, in
appropriate circumstances, could “almost preclude
any possibility of
registration in good faith of a domain name. . . .” Gene Logic, Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002) (finding bad faith where Respondent registered the <genelogic.biz>
domain name “with
full knowledge that his intended business use of this domain
name was in direct conflict with a registered trademark of a known competitor
in
exactly the same field of business”).
First, however, there is no evidence that
Respondent registered the domain name primarily for the purpose of selling,
renting, or
otherwise transferring the name to Complainant or its competitor
for valuable consideration in excess of Respondent’s out-of-pocket
costs
directly related to the domain name which is the bad faith requirement of STOP
Policy ¶4(b)(i). The Panel so finds and
concludes.
It is of interest to note that it has
been held that, where a domain name is generic, as here, even an offer for sale
by Respondent
will not establish bad faith.
See John Fairfax Publ’n. Pty Ltd v. Domain Names 4U, D2000-1043
(WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith
registration where the Respondent is a seller of
generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb.
Forum May 11, 2000) (finding no bad faith where the domain involves a generic
term and there is no direct evidence
that Respondent registered the domain name
with the intent of capitalizing on Complainant’s trademark interest).
Under UDRP ¶4(b)(ii), a Complainant may
demonstrate Respondent’s bad faith by showing that Respondent registered the
domain name for
the purpose of preventing Complainant from registering domain
names that reflect its mark(s), provided Respondent has engaged in
a pattern of
such conduct. Under STOP Policy
¶4(b)(ii), the Complainant may similarly prove bad faith by showing the
Respondent registered the domain name for
the purpose or preventing Complainant
from registering domain names reflecting its mark(s). However, under the STOP provision, there is no “pattern” of
conduct requirement. Thus, Panels have
inferred bad faith under STOP Policy ¶4(b)(ii) when only one domain name was at
issue and no prior history of trademark
infringement was established. See Peachtree Software v. Scarponi, FA
102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶4(b)(ii), noting that it was reasonable to conclude
Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding
domain name, given Respondent’s knowledge
of Complainant’s mark and Respondent’s lack of rights or interests in the
mark).
But here, secondly, there is no evidence
of such conduct by Respondent, either by pattern or otherwise. The Panel so finds and concludes.
STOP Policy ¶4(b)(iii) is nearly
identical to ¶4(b)(iii) of the UDRP. It
states that bad faith is established when a Respondent registers a domain name
“primarily for the purpose of disrupting the business
of a competitor.”
While the word “competitor” has often
been broadly interpreted under both the STOP Policy and the UDRP to encompass
claims by entities
that might not traditionally be viewed as competing, (see Tufts
Univ. v. Creation Research, FA 102787 (Nat. Arb. Forum Jan. 18, 2002)
(finding bad faith under STOP Policy ¶4(b)(iii) where Complainant was a
university and
Respondent was a research company); see also Mission Kwa Sizabantu
v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” under
the UDRP as “one who acts in opposition to another and the context does
not
imply or demand any restricted meaning such as commercial or business
competitor”)), literally and figuratively, the Complainants
and Respondent are
at least half a world apart engaging in completely different activities.
Thus, thirdly, here, this aspect of “bad
faith” has not been established. The
Panel so finds and concludes.
STOP Policy ¶4(b)(iv) is also essentially
identical to ¶4(b)(iv) of the UDRP. It
states that bad faith is established when a Respondent, by using the domain
name, has intentionally attempted to attract, for commercial
gain, Internet
users to its website or other on-line location, by creating a likelihood of
confusion with the Complainants’ mark
as to the source, sponsorship,
affiliation., or endorsement of the website or location or of a product or
service on the website
or location.
Fourthly, Complainants make this
assertion, but have failed to prove it.
Thus, the Panel simply cannot find and conclude that Respondent acted in
bad faith. To the contrary, the Panel
finds and concludes that Respondent registered the disputed domain name in good
faith.
DECISION
Based
on the above findings and conclusions, the Complaint herein is dismissed. Subsequent challenges under the STOP Policy
against the subject domain name shall be permitted.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated:
June 12, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/859.html