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Generic Top Level Domain Name (gTLD) Decisions |
PartnerShip LLC v. Aly Ramzan
Claim Number: FA0204000112450
PARTIES
Complainant
is Rebecca Evans d/b/a PartnerShip LLC, Oberlin, OH, USA (“Complainant”) represented by Jennifer L Myron, of Arent Fox Kintner Plotkin & Kahn PLLC. Respondent is Aly Ramzan, Karachi, PAKISTAN (“Respondent”).
The
domain name at issue is <partnership.biz>,
registered with Tucows, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
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 20, 2002.
Complainant’s
Additional Submission was timely received and determined to be complete on May
28, 2002.
On
June 5, 2002, Respondent submitted an untimely additional submission. In its discretion, the Panel considered this
submission.
On June 3, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant,
PartnerShip LLC, contends that it has rights in the mark PARTNERSHIP through
its pending application with the U.S. Patent
and Trademark Office (USPTO) to
register its mark. Complainant also
contends that it has common law rights in the PARTNERSHIP mark based upon its
extensive use of the mark in interstate
commerce to advertise and promote its
shipping services. Complainant contends
that Respondent has no rights or legitimate interests in respect of the domain
name. Respondent is not known as
PARTNERSHIP and has not used the domain name in connection with a legitimate
web site or a bona fide offering
of goods or services. Complainant contends that Respondent
registered the domain name in bad faith.
B.
Respondent
Respondent,
Aly Ramzan, has filed a Response identifying the Respondent as Partnership.biz,
a Pakstani company in process of setting
up a business specializing in
“creating partnerships between ISP’s and Product suppliers and provide product
and services under a
one window operation.”
Ramzan has been in this business at the local city level since 1998 and
is planning to expand country wide with the help of <Partnership.biz>. Respondent’s web site is under
construction. Respondent contends that
the domain name is generic. Respondent
disputes whether Complaint has acquired any common law rights in the name
PARTNERSHIP. Respondent contends that
Complainant is not commonly known as “PartnerShip” and that Complainant is
known as “NACS”. Respondent contends
that he acted in good faith in registering a generic name.
C.
Additional Submissions
Complainant
Complainant
contends that that Respondent applied for registration of the domain name <partnership.biz>,
which is identical to Complainant’s trademark PARTNERSHIP, with full knowledge
that his application was in direct conflict with
Complainant’s trademark
rights; that Respondent is not commonly known by the domain name or the mark;
and that Respondent does not
have a bona fide business or commercial use for
the domain name.
Respondent
Respondent
contends that Complainant doesn’t have rights in the PARTNERSHIP mark because
it just changed its name to PartnerShip LLC
in 2001; that the mark is generic;
and there are many companies with the name PARTNERSHIP.
1. Complainant, Partnership LLC, is an Ohio
Limited Liability Corporation that specializes in meeting shipping needs for
small and medium
sized businesses.
Complainant has been in business since July 2, 2001 and has been using
the mark PARTNERSHIP since at least as early as July 2001.
2. The National Association of College
Stores, Inc. (“NACS”) is a non-profit corporation incorporated under the laws
of the State of
Ohio. Complainant is a
for-profit subsidiary of NACS that was started in 1990 as a member benefit of
NACS, became known as “Associations
Connections” by 1994, and was established
as a limited liability corporation in the State of Ohio in 1999. In 2001, NACS announced that Associations
Connections would be named “PartnerShip LLC” to help improve customer awareness
and promote
growth. PartnerShip LLC and
NACS are separate, distinct and legitimate legal entities.
3. On or about
June 4, 2001, Complainant filed a trademark application with the USPTO to
register its PARTNERSHIP mark in International
Class 039, in connection with
developing and managing freight brokerage and shipping services for others
through discounted shipping
programs, used as early as July 2, 2001. This application is currently pending.
4. Complainant currently offers information
about its services on a web site under the domain name <ps500.com>;
however, Complainant
desires to secure a domain name that is identical to its
company name, PartnerShip LLC, so that Internet users may easily find its
web
site. Accordingly, Complainant filed an
IP Claim for the domain name <partnership.biz>, along with an
application for registration of the domain name, with Neulevel, the .biz
Registry, on or about August 2001.
Complainant submitted a second IP Claim in March 2002.
5. Respondent applied for registration of
the domain name <partnership.biz>, which is identical to the term PARTNERSHIP. During the selection process with Neulevel,
registration of the domain name was awarded to Respondent.
6. Respondent has not yet used the site
saying it takes time to establish a site.
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.
Although
the disputed domain name is identical to the term PARTNERSHIP, Complainant does
not have protectable rights in the mark.
Complainant has failed to show proof of a registered trademark. Nor has Complainant shown proof of any
common law trademark rights.
Complainant holds no USPTO trademark registration for
PARTNERSHIP, and Complainant is not entitled to a presumption of rights in that
term. 15 U.S.C. 1057 (b) (establishing presumption of exclusive right to use
based on registration); Bar Code Discount Warehouse, Inc. v. Barcodes, Inc.,
D2001-0405, (WIPO, July 27, 2001) (The terms, Bar Code Discount Warehouse, in which
Complainant claims service mark rights is generic or commonly
descriptive.). Complainant’s application for trademark registration standing
alone does not establish rights or presumptions. 15 U.S.C. 1057 (c) (Contingent on subsequent registration, an
application creates a presumption of use); Bar Code Discount Warehouse, Inc.
v. Barcodes, Inc., supra.
To
the extent the Complainant has any rights in the disputed domain name, those
rights must arise from common law rights. See Salem Five Cents
Savings Bank v. Direct Federal Credit Union, FA 103058 (Nat. Arb. Forum
Feb. 15, 2002). To acquire common law
rights, the mark must be shown to have acquired distinctiveness. Id. However, a generic mark is incapable of
acquiring any distinctiveness and, as such, is unable to obtain trademark
status at common
law. Id.
Generic terms for goods or services are incapable of functioning as
registrable trademarks denoting origin or any specific source.
See Dollar
Fin. Group, Inc. v. VQM Net, FA 96101 (Nat. Arb. Forum Jan. 25, 2001). The Panel concludes that Complainant cannot
establish exclusive rights in the word PARTNERSHIP because the word is generic.
As the Panel has determined that
Complainant has no rights in respect to the mark PARTNERSHIP and there are no
subsequent IP Claimants,
it is unnecessary for the Panel to address the second
issue of Respondent’s rights or legitimate interests or the third issue of
bad
faith.
DECISION
Complainant’s Complaint is dismissed.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 13, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/864.html