START-UP TRADEMARK OPPOSITION POLICY

DECISION

NPES v. Ross LeBel

Claim Number: FA0204000110761

PARTIES

Complainant is NPES, Reston, VA (“Complainant”) represented by Lilly Y Kinney.  Respondent is Ross LeBel, Blaine, WA (“Respondent”) represented by Stephen L. Anderson, of Anderson & Shippey.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <print.biz>, registered with GAL Communications.

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.

Alan L. Limbury 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 19, 2002; the Forum received a hard copy of the Complaint on April 23, 2002.

On April 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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 13, 2002.

On 17 June 2002, pursuant to STOP Rule 6(b), the Forum appointed Alan L. Limbury Esq. as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has used the trademark PRINT since 1966. U.S. Federal registration for that mark (No. 1,430,500) was obtained in 1987 in the name of National Printing Equipment and Supply Association, Inc. in respect of “organizing and conducting trade shows for exhibitions of machinery, equipment and supplies used in the graphic arts industry”, in International class 35 (U.S. class 101).

The PRINT trade show event has been held in 1968, 1974, 1980, 1985, 1991, 1997 and 2001, with the next events scheduled for 2005 and 2009. The PRINT mark is in perpetual use in connection with these events.

The disputed domain name is identical to the registered trademark PRINT. Galcomm has no rights or legitimate interest in the disputed domain name. Its primary business is the registration and sale of domain names. The disputed domain name was registered or is being used in bad faith because the registry [sic] of <print.biz> by Galcomm is for the sole purpose of resale to the public. Sale to anyone other than Complainant could cause confusion when used in conjunction with other events. Use by Complainant’s competitors in conjunction with competitive events within the industry would cause both confusion and disruption and loss of revenue to Complainant and damage to its reputation as the mark holder.

B. Respondent

Respondent is Mr. Ross Lebel as registrant of the disputed domain name, not Galcomm, the registrar. Complainant’s assertions concerning Galcomm are irrelevant.

Since 1996, Respondent has carried on business under the name CyberVision Network providing various services as an Internet Service Provider, including domain name registrations. He registered the disputed domain name with the intent of expanding his business to include selling print-outs of websites owned by third parties, selling photographic quality prints of photographs and graphic materials residing on, or otherwise captured on CD-ROM format from websites of third parties, and/or creating and selling boxes, POP displays, print ads, print brochures, banners, fliers and the like to his clients.  He did so without Complainant in mind, as the generic word PRINT is apt to describe Respondent’s print and printing services.

Complainant lacks any exclusive rights to the purported mark PRINT, since it is generic and descriptive, with substantial third party use.

Respondent has a legitimate interest in the disputed domain name and Complainant has failed to show that it was registered in bad faith.

This is a case of Reverse Domain Name Hijacking.

FINDINGS

Complainant has failed to establish all the elements necessary to entitle it to the relief sought.

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

Complainant has established that the Mark PRINT is registered in the U.S.A.  It is not clear that the registrant of the mark (National Printing Equipment and Supply Association, Inc.) is the same entity as NPES, Complainant.  The Panel is prepared to assume they are one and the same.

The Panel finds that the disputed domain name is identical to the mark PRINT. Complainant has established this element.

Respondent’s Rights or Legitimate Interests

The onus of proving absence of rights or legitimate interest in a disputed domain name is on the Complainant. Complainant makes no claims against Respondent in this regard, merely claims against the registrar that are irrelevant.

As an ordinary English noun and verb in common use, PRINT has a variety of descriptive meanings and cannot belong exclusively to anyone. Despite its registration as a trademark for a limited field of use, the mark is inherently weak. In the case of generic marks and domain names, “in particular where they comprise no more than a single, short, common word, the rights/interests inquiry is more likely to favor the domain name owner”: Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution).

Because the word PRINT is generic, the Panel finds that Respondent has rights and a legitimate interest in the disputed domain by virtue of having been the first to register it: FreedomCard, Inc. v. Kim,  D2001-1320  (WIPO) and the cases there cited.

Complainant has failed to establish this element.

Registration or Use in Bad Faith

Complainant makes no allegations of bad faith against Respondent, only irrelevant assertions against the registrar.

Complainant has failed to establish this element.

Reverse Domain Name Hijacking

STOP Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  To prevail on such a claim, Respondent must show either that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO) and Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO) or that the Complaint was brought in knowing disregard of  the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, D2000‑0993 (WIPO).

The Panel considers this Complaint to have been badly misconceived but not to have been brought in bad faith. Accordingly it is not appropriate to make a finding of Reverse Domain Name Hijacking.

DECISION

The Complaint is dismissed. Pursuant to STOP Rule 15(e)(ii), the Panel decides that no subsequent challenges under the STOP against the domain name <print.biz> shall be permitted.

Alan L.Limbury Esq., Panelist
Dated: 25 June 2002

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