Generic Top Level Domain Name (gTLD) Decisions

START-UP TRADEMARK OPPOSITION POLICY

                                                                     DECISION

                                     Nationwide Mutual Insurance Company v. Universal

                                                                 Claim Number: FA0204000112453

PARTIES

Complainant is Nationwide Mutual Insurance Company, Columbus, OH (“Complainant”) represented by Jessica S. Sachs, of Thompson Hine LLP.  Respondent is Universal, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <scottsdale.biz>, registered with Domain People, Inc.

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.

Honorable Paul A. Dorf, (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 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 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 23, 2002.

On June 7, 2002, pursuant to STOP Rule 6(b), the Forum appointed Honorable Paul A. Dorf, (Ret.) as the single Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is identical to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in the Complainant’s mark; and that Respondent registered the domain name at issue and/or used the domain name in bad faith with the intent to trade on the goodwill of Complainant’s mark and possibly create a likelihood of confusion in the minds of Internet users regarding affiliation or endorsement with the Complainants’s mark.

B. Respondent

The Respondent contends that the domain name in dispute is not identical to the Complainant’s  trademark; that the Respondent has rights and legitimate interests in the domain name at issue but as the Respondent acquired the domain name within the last few weeks, there has not been an adequate period of time to establish use of the name in connection with an offering for goods or services; and that the Respondent did not register the domain name at issue in bad faith.

FINDINGS

The Complainant is engaged in the business of offering financial services as well as casualty, automobile, life and health insurance services in the United States and throughout the world.

The Complainant is the owner of the mark Scottsdale Insurance Company, and has registered this trademark.  The Complainant has used this trademark since 1982 and was granted a federal trademark registration by the U.S. Patent and Trademark Office on February 11, 1986.  The Complainant’s mark SCOTTSDALE has been in use for almost twenty years and registered for fifteen years. 

The Respondent registered the domain name at issue on March 27, 2002. No further information regarding the Respondent’s business matters was provided.

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

It is well settled in the law of trademarks that trademark rights arise from use, and so the first to use a mark is first in right.  A user’s rights in a mark exists independent of any procedural benefit given by the United States Patent and Trademark Office when conferring a trademark registration.  Complainant has established federally registered and common law rights in the mark through continuous use of the mark over the last twenty years approximately, in addition to registering the mark with the United States Patent and Trademark Office.  See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark).

Respondent’s Rights or Legitimate Interests

The Complainant has demonstrated an attempt to protect its mark through registration and use of the domain name to fully utilize the mark and trade on its goodwill.  The Respondent, in registering and attempting to use its domain name seeks to trade on the goodwill that the Complainant’s mark has created.  See 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, Respondent has failed to provide any proof of its alleged business venture and has made no alteration to its site since the registration date. 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).

Registration or Use in Bad Faith

Respondent registered the domain name in dispute in an attempt to benefit from the goodwill associated with the Complainant’s mark.  The Respondent has not demonstrated an intent much less identifiable preparation to establish use of the domain name in connection with the bona fide offering of goods or services.  The Respondent has registered a site which thus far is not in use or under construction.   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).

Use of the domain name in dispute by Respondent suggests a deliberate attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of the website.  See 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”); see also Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(i) where Respondent offered to sell the domain name for $900, specifically noting that it would cost Complainant more to enforce its rights legally than to succumb to Respondent’s attempted extortion).

DECISION

Having established all three elements required under the Start -up Trademark Opposition Policy, this panelist concludes that relief shall be granted.

Therefore, it is Ordered that SCOTTSDALE.BIZ be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 21, 2002

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