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Generic Top Level Domain Name (gTLD) Decisions |
Eugene E. Pettinelli v. Postel Services,
Inc.
Claim Number: FA0204000112600
Complainant is Eugene E. Pettinelli, Wayland, MA, USA (“Complainant”), pro
se. Respondent is Postel
Services, Inc., Seoul, KANGNAM-GU, SOUTH KOREA (“Respondent”), pro se.
The domain name at issue is <startup.biz>, registered with OnlineNIC, Inc. d/b/a Chinachannel.com.
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.
M.
KELLY TILLERY, ESQUIRE 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 25, 2002; the Forum received a hard copy of the
Complaint on
April 27, 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 the Start-up Trademark Opposition Policy
(the “STOP Rules”).
A timely Response was received and
determined to be complete on May 16, 2002.
Complainant submitted an Additional
Submission after the deadline, thus, not in compliance with STOP Supplemental
Rule #7. Also, Respondent submitted an
Additional Submission after the deadline, thus, not in compliance with STOP
Supplemental Rule #7.
On June 20, 2002,
pursuant to STOP Rule 6(b), the Forum appointed M. KELLY TILLERY, ESQUIRE as the single Panelist.
Transfer of the domain name from
Respondent to Complainant.
A. Complainant
Complainant contends that it owns the
following trademarks with Applications filed with the United States Patent and
Trademark Office:
“STARTUP.BIZ” – USPTO Serial No.
76192969- Filing Date: January 11, 2001 and
“STARTUP.COM” – USPTO Serial No. 75485177
– Filing Date: May 14, 1998.
Complainant also contends that
startup.com,Inc. is a party “related to Complainant” which owns the following
trademark:
“STARTUPINTERNATIONAL.COM” – USPTO Serial
No. 75890345 – Filing Date: 1/9/00
Complainant contends that Respondent does
not own any related “startup” domain names such as <startup.net>,
<startup.org>,
<startup.com> or <startup.info>.
Complainant contends that Respondent has
no registered trademark including the word “startup” in any jurisdiction.
Complainant contends that Respondent’s
website (<postelkorea.com>) does not indicate any related business use of
the term “startup”
but rather is a “universal e-mail add-on service.”
Complainant contends that “STARTUP.BIZ”
is a trademark of Complainant and any use by Respondent of <startup.biz> would cause confusion in the marketplace.
B. Respondent
Respondent contends that the USPTO
Trademark Registration “STARTUP.BIZ” is not valid in South Korea, the nation in
which the Respondent
resides and does business.
Respondent contends that Complainant’s
“STARTUP.BIZ” U.S.P.T.O. Trademark Application was not filed until January 11,
2001, several
months after the official announcement by ICANN of the .bizTLD
launch in late 2000.
Respondent contends that according to
Colins COBUILD English Dictionary, a “startup” company is a small business that
has recently
been started by someone and that “Start Up”, “Start-Up” and “Start
Up Business” are generic nouns to which no one can claim exclusive
rights and
therefore no one can be barred from using “Start Up” in their website name.
Respondent contends that it is running a
small online business and has ‘an interest in building a new company with new
business items
with friends and colleagues because everyone has a dream to run
his or her own company.’ Respondent
points out the “Start Up” is used in the STOP process itself and that STOP means
“Start Up Trademark Opposition Policy” so “Start Up” is a generic
term.
Respondent contends that Complainant has
failed to provide proof that (1) Respondent has registered the domain name
primarily for
the purpose of selling, renting or otherwise transferring the
domain name registration to Complainant or to a competitor of Complainant
for
valuable consideration in excess of Respondent’s documented out-of- pocket
costs directly related to the domain name; (2) Respondent
has registered the
domain name in order to prevent Complainant from reflecting the mark in a
corresponding domain name; (3) Respondent
has registered the domain name
primarily for the purpose of disrupting the business of Complainant;
(4) Respondent has intentionally
attempted to attract, for a commercial gain, internet users to Respondent’s
website or other online
location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship and/or affiliation or
endorsement
of Respondent’s website or location of a product or service on
respondent website of location.
Respondent contends that its website
could not be constructed because the <startup.biz>
domain name has been in Registry Hold from April 8, 2002 and that the domain is
expected to go live after all the IP claims are resolved.
Thus, Respondent contends that the fact
that <startup.biz> has no
website yet does not indicate that Respondent is holding the domain name
passively. Respondent is simply waiting
for the domain name to go live.
C. Additional Submissions
Both the Additional Submissions of
Complainant and Respondent were untimely and will not be
considered.
1)
Complainant
has failed to meet its burden to prove by a preponderance of the credible,
relevant and admissible evidence that the domain
name is identical to a
trademark or service mark in which Complainant has rights.
2)
Complainant
has met its burden to prove by a preponderance of the credible, relevant and
admissible evidence that Respondent has no
rights or legitimate interests in
the domain name.
3)
Complainant
has failed to meet its burden to prove by a preponderance of the credible,
relevant and admissible evidence that Respondent
registered or is using the
domain name in bad faith.
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 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 Complainant has
rights; and
(2) 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 Complainant asserts rights.
Complainant has failed to establish that
it has “rights” in the mark “STARTUP”.
A review of the U.S. Patent and Trademark
Office Trademark Electronic Search System reveals that an Application for the
word mark
“STARTUP.COM” was filed as an Intent to Use Application on May 14,
1998 and was approved for registration on the Supplemental Register
(Serial No.
7548577). The current status is “final
review prior to publication has been completed, application will be published
for opposition” but no
date has been scheduled for publication in the Official
Gazette. Acceptance by the USPTO of a
mark for publication on the Supplemental Register does not in and of itself
establish that Complainant
has rights in and to the mark. Registration on the Supplemental Register is
not prima facie evidence of the validity of the
registration or of the registrant’s ownership of the mark or of the
registrant’s exclusive right
to use the mark in commerce. In re Federated Dept. Stores, 3
U.S.P.Q. 2d 1541 (T.T.A.B. 1987).
The same records of the USPTO indicate
that an Application for the word mark “STARTUP.BIZ” was filed as an Intent to
Use on January
11, 2001 (Serial No. 76192969), that a communication from the
Applicant was received by the USPTO on December 26, 2001 and shortly
thereafter
on May 9, 2002, a Letter of Suspension was issued by the USPTO. Thus, the Application for that mark is
suspended, presumably at the request of the Applicant, Complainant herein. *
Although Complainant’s Complaint does not
expressly claim that the marks are “registered”, it at best misleadingly
suggests same and
does not give an accurate report of the current status of the
Applications. While this Panel allows
some leeway with pro se complaints, this one comes dangerously
close to being intentionally false.
Because Complainant has failed to prove
that it has rights in the claimed mark as required by STOP Policy 4(a)(1), it
unnecessary
to consider whether Complainant has proven the additional required
elements of the STOP Policy to determine whether to find for Complainant
or
Respondent.
Since
the claimed “mark” STARTUP” is generic,
Respondent cannot be the owner of beneficiary of a trade or service mark that
is identical to the domain name. STOP
Policy 4(c)(i). Respondent has not
argued for or submitted evidence in support of a STOP Policy ¶4(c)(ii) or (iii)
argument and this Panel finds no
convincing evidence of Record otherwise to
support Respondent’s claim of rights or interests. What is good for the goose is good for the gander. Respondent does not have rights or
legitimate interests in the domain name in question.
Complainant has proffered no evidence to
support its claim of registration or use in bad faith. Under these circumstances, Complainant has
failed to prove by a preponderance of
the credible, relevant and admissible evidence that the domain name in
question was registered or is being used in bad faith.
Subsequent challenges under the STOP
Policy against the domain name shall be permitted.
Complainant’s Complaint is hereby dismissed. Respondent shall retain the domain name <startup.biz>.
Subsequent challenges under the STOP Policy against the domain name shall
be permitted.
M. KELLY TILLERY, ESQUIRE, Panelist
Philadelphia, Pennsylvania
Dated: June 25, 2002
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