START-UP TRADEMARK OPPOSITION POLICY

DECISION

MLS Network, Inc. v. David Therrien

Claim Number: FA0204000112582

PARTIES

Complainant is MLS Network, Inc., Mt. Pleasant, SC (“Complainant”) represented by William M. Hicken.  Respondent is David Therrien, Pasadena MD (“Respondent”) represented by Michael Yang, of Gorman & Williams.

               

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mls.biz>, registered with Gal Communications Ltd.

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.

                Judge Richard B. Wickersham, (Ret.) 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 28, 2002; the Forum received a hard copy of the Complaint on April 28, 2002.

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on May 28, 2002.

On June 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Richard B. Wickersham, (Ret.), as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to  Complainant.

               

PARTIES’ CONTENTIONS

A.   Complainant

[a]           The domain name <mls.biz> is identical to the service mark “MLS” in which the Complainant has rights.  STOP Rule 3(c)(ix)(1); STOP ¶ 4(a)(i).

[b]           The Respondent, David Therrien, should be considered as having no rights or legitimate interests in respect of the domain name <mls.biz>.   STOP Rule 3(c)(ix)(2); STOP ¶ 4(a)(ii).

[i.]    Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name; and

[ii.]   The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name, even if Respondent has not acquired trademark or service marks rights.

[c]            The domain name <mls.biz> should be considered as having been registered in bad faith.  STOP Rule 3(c)(ix)(3); STOP ¶ 4(a)(iii).

[i.]    The Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; and

[ii.]   By registering the domain name <mls.biz>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s future or existing web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

B.   Respondent

Respondent is an individual citizen and resident of the State of Maryland.  Respondent has been a licensed real estate agent in the State of Maryland since June, 1996, and has been a member of the National Association of Realtors (“NAR”), the principal national governing entity for real estate professionals, since August, 1996.  Respondent is the owner and President of a Maryland corporation in existence as of February, 2000 and principally engaged in real estate-related business.

Over the past seven years, Respondent has, in the course of conducting his real estate business, endeavored to modernize his business by utilizing the Internet.

The term multiple listing service is a generic, common name for a type of service used to assist real estate professionals as well as buyers and sellers of real estate in the process of marketing and viewing properties for sale in a particular locale.

On or about September 1, 2001, Respondent learned of the opportunity to register new Internet domain names in the .BIZ domain.  Respondent hoped to take advantage of this opportunity by registering various Internet domain names for use with his real estate business interests.  In deciding upon the domain names to be registered for business use, Respondent made efforts to select domain names that are descriptive of the services offered or to be offered by him such as MLS.

FINDINGS

[a]           The domain name <mls.biz>is identical to the service mark “MLS” in which the Complainant has rights.   In STOP proceedings, the generic top-level domain (“gTLD”) “.biz” is irrelevant when determining whether a domain name and mark are identical, just as gTLDs such as “.com” and “.net” are disregarded in UDRP cases.  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).

[b]           The Respondent, David Therrien, should be considered as having no rights or legitimate interests in respect of the domain name <mls.biz>. 

[i.]    Respondent is not the owner or beneficiary of a trade or service mark that is identical to the domain name; and

[ii.]   The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name.

[c]            The domain name <mls.biz> should be considered as having been registered in bad faith. 

[i.]    The Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; and

[ii.]   By registering the domain name <mls.biz>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s future or existing web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.  Because many of the “.biz” domain names were very recently registered, Panels have previously held that, even when the domain name has not been used, bad faith under STOP Policy ¶4(b)(iv) can be demonstrated based on the confusion that will inevitably arise when the Respondent finally uses the name.  See Fluor Corp. v. Song, FA 102757 (Nat.Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat.Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).

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 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

The Complainant has rights in the mark, as asserted in the Complaint and as evidenced by exhibit schedule “A”, service mark MLS from United States Patent and Trademark Office, registered July 11, 2000, registration number 2,366,116, as well as evidenced by exhibit schedule “B”, service mark MLS, United States Patent and Trademark Office, registered October 9, 2001, registration number 2,496,018.   The Panel further determines that Respondent has no rights or legitimate interests in the disputed domain name, hence, the Panel concludes that the Complainant has rights and the Respondent has no rights or no legitimate interests in the mark.

The Panel further finds that the domain name has been registered by Respondent in bad faith and is being used in bad faith by Respondent, in respect of the domain name <mls.biz>.

The Panel finds that the domain name, <mls.biz>, is identical to a trademark or service mark in which the Complainant has rights; and further, that the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered or is being used in bad faith.  Hence, it is the decision of the Panel that the domain name should be transferred from the Respondent to the Complainant.   Much like UDRP Panels, STOP Panels have found that a Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.”  Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat.Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).

Additionally, it is not enough that a Respondent claim that it registered the disputed domain name in anticipation of being known by the name.  It must provide some proof that it is commonly known by the domain name to establish rights under STOP Policy ¶4(c)(iii).   See Gene Logic Inc. v. Bock, FA 103042 (Nat.Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”) (emphasis in original).  Indeed, while the burden is initially placed on the Complainant to show that a Respondent does not have rights or legitimate interests in a domain name, after such a showing is made, the burden then shifts to the Respondent “to explain by valid evidence a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict.”  Gene Logic Inc., supra.

Further, we determine that subsequent challenges against the STOP Policy against this domain name shall not be permitted.

DECISION

The Panel finds that the Complainant has proved each of the following three elements and is entitled to an Order that the domain name should be transferred from Respondent to Complainant, to wit:  the domain name <mls.biz> is identical to a trademark or service mark in which the Complainant has rights; and further, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name; and, the domain name has been registered or is being used in bad faith.

The Panel finds, therefore, in favor of the Complainant and transfers the disputed domain name to Complainant.  We further determine that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

               

                                                                               

                                                                                               

                                                                                JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

                                                                                               

                                                                                                                                Dated:    June 17, 2002

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