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Generic Top Level Domain Name (gTLD) Decisions |
Kalamazoo Security Print v. Daniel
Thralow
Claim Number: FA0204000112430
PARTIES
Complainant
is Kalamazoo Security Print,
Birmingham, UNITED KINGDOM (Great Britain) (“Complainant”) represented by Kevin Bassett. Respondent is Daniel Thralow, Duluth, MN, USA (“Respondent”).
The
domain name at issue is <kalamazoo.biz>,
registered with Network Solutions, Inc.
The
undersigned, Jacques A. Léger, Q.C. acting as Panelist, 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.
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
has submitted a Complaint to the Forum
electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on May 1, 2002.
On May 9, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of May 29, 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, but the exhibits were only received after the
Response was accepted by the Forum who
accordingly did not consider the exhibits to be in compliance with STOP Rule
#5(a). However, the Panel has decided
to use its discretion in considering the exhibits given that they had been
received before the due
date of May 29, 2002;
moreover, given that no negligence was shown on the part of Respondent for such delay, it would appear
to be unequitable to ignore the exhibits in the circumstances and time frame
they were
received.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jacques A. Léger Q.C as the single Panelist.
The
Complainant requests that the Domain Name be transferred from Respondent to
Complainant.
A. Complainant
Complainant contends that the <kalamazoo.biz> domain name is identical to Complainant's KALAMAZOO
mark. Complainant submits that the Kalamazoo Security Print has been established
since 1896 and that it
has held the trade mark KALAMAZOO for many years.
Complainant claims that the Respondent
has no rights or legitimate interests in the domain
name.
The Complainant contends the domain name
should be considered as having been registered in bad faith on the basis that
even if <kalamazoo.biz> is
currently unavailable, the Respondent is making it difficult for it and causing
obstruction if it wanted to sell its products
via <kalamazoo.biz> domain name.
B. Respondent
Respondent contends that Complainant has
not satisfied its burden of proof. He disputes that Complainant owns any rights
in the name
KALAMAZOO apart from its use selling stationary, printing services,
and other goods, referred to in the various trade-marks certificates
filed with
the Complaint. He claims that the use of KALAMAZOO as a city name, and common
word, dates well before the Complainant's
trade mark. Moreover, he states that there are many other businesses
incorporating the word KALAMAZOO, without evidence of Complainant objecting
to
such use; therefore the Complainant "has no greater right to object
to the Respondent's use of the word in
it's domain name than it has against another user". Respondent finally contends that the
Complainant has not brought forward evidence of KALAMAZOO's exclusive
identification with Complainant's
business . . . nor that they are distinctive
of the Complainant’s services.
Respondent claims that he has rights and legitimate interests in the domain name. He states that he intends
to procure the city of Kalamazoo, Michigan, with a marketing contract, based on
his
history of purchasing or registering common or generic words to be used in
marketing and e-commerce. Given his business background
and history, the
Respondent claims that "he picked the domain www.kalamazoo.biz as a
natural extension of his business of marketing,
recruitment and retention for
municipalities." Moreover, the
Respondent claims to enjoy common law rights in the name KALAMAZOO given the
numerous years of use of the name by the
county and municipality of Kalamazoo,
Michigan.
Finally,
Respondent argues that he has not registered and is not using the domain
name in bad faith, the Complainant having failed to produce
evidence that he "registered the disputed domain name for the purpose of
selling, renting,
or transferring it to Complainant; to prevent Complainant
from reflecting its trademark in a domain name, together with a pattern
of such
conduct; to disrupt the business of a competitor". He claims to have picked
up the domain name as a natural extension
of his marketing business recruitment
and retention for municipalities.
Having reviewed the complaint and
evidence submitted by the parties, the Panel makes the following findings:
·
Complainant
does have rights in the
mark KALAMAZOO for the wares and services it deals in or with as submitted in
evidence. Complainant has used
continuously the KALAMAZOO trademark over the years in association with
stationary, security printing techniques
and security products as shown in the
company brochure and literature. However, Complainant has failed to show that
its reputation
extended beyond these
services and products.
·
The
disputed domain name <Kalamazoo.biz>
is identical to Complainant's trademark KALAMAZOO.
·
Respondent
did not satisfy its burden to show that it has rights in the domain name <kalamazoo.biz> as there has been no evidence of use or demonstrable
preparations on behalf of Respondent to use the disputed domain name.
·
Complainant has not satisfied its burden to show that Respondent has
acted in bad faith in either registering the domain name in dispute;
KALAMAZOO has been the name of a city in
Michigan for over 165 years and a term used as a first name for a number of
businesses in
the State of Michigan.
·
There has
been no evidence of use to show that both parties are in competition with one
another, directly or indirectly, as they each
deal with entirely different
wares and services.
Section 15(a) of the STOP Rules requires the 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.”
Section
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:
(i)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii)
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
has exercised its discretion to rely on relevant UDRP precedent wherever
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.
Obviously, 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.
On
this first issue, the Panel finds that Complainant has satisfied its burden in
showing that it has rights in the mark KALAMAZOO
given the fact that it has
registered it in some 40 countries, as shown in the submitted exhibits
including the trademark certificates
and the company literature. It has also
been using the mark for many years and has developed a reputation amongst
printing services
enterprises.
Noteworthy though that the evidence adduced by Complainant has failed to
show that its exclusivity for the mark should naturally extend
beyond the wares
and services for which it is registered, particularly given the fact that the
word KALAMAZOO is also a geographical
location.
Because
of the intended commercial nature of websites hosted at ".biz" domain
names, STOP Policy 4(c) does not contemplate
that a Respondent may demonstrate
its rights/interests through legitimate or non-commercial fair use as the
corresponding Section
in the UDRP does.
The Panel finds that the Respondent does
not have any rights in the name KALAMAZOO. The Respondent has failed to prove,
before any
notice of the dispute, its use or demonstrable preparations to use
the domain name in connection with a bona fide offering of goods
and services.
Although the Respondent claims that "the domain name www.kalamazoo.biz is
a perfect and very valuable extension
of the municipality marketing and
business recruitment services offered by " the Respondent, the domain name
<kalamazoo.biz> is still not
operable. Respondent's "unsupported, self-serving allegations are
insufficient to establish that [the] Respondent
has rights or legitimate
interests in respect to the domain name at issue." 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, it
is not enough that a Respondent claim that it registered the disputed domain
name in anticipation of being known by the name.
To
prove bad faith under the STOP Policy, a Complainant only needs to prove
either registration or use of the domain name in bad faith,
not both as the UDRP requires. STOP Policy 4(b) is otherwise very similar to
UDRP 4(b). Complainant
may demonstrate Respondent's bad faith by showing that
Respondent registered the domain name for the purpose of preventing Complainant
from registering domain names that reflect its mark. While under the STOP
Policy there is no pattern of conduct requirements, the
simple allegation is
not enough to conclude automatically to bad faith, particularly that in this
case:
i)
Complainant
did not show that there was competition between itself and the Respondent;
ii)
While
Complainant has some trademark rights for KALAMAZOO in association with the
wares and services it offers and produces, it has
failed to adduce evidence
which would justify extending trade-mark protection beyond.
While
Panel acknowledges that the word "competitor" has been broadly
interpreted both under STOP Policy and UDRP to encompass
claims by entities
that might not traditionally be viewed as competing, in the case at hand, there
is no evidence that Respondent
registered the domain name primarily to prevent
Complainant of so doing or for the purpose of disrupting the business of a
competitor.
Furthermore, there is no evidence to the effect that Respondent, by
registering the domain name, has intentionally attempted to attract,
for
commercial gain, Internet users to its website 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 the website or location or
of a product or service on the website,
if only as shown by the evidence
adduced by Complainant, it does not itself use its trade-mark for its own
website, and it has not
objected to the use by other businesses of said
mark. As appears from the letterheads
filed as exhibits, the Panel has noted that Complainant itself chose to adopt
for its website the
address <ksp.co.uk>. Therefore, in the circumstances, it would be difficult to infer
prima facie to Respondent an intention of bad faith in choosing the
term
KALAMAZOO for its own services or wares.
This is certainly not conclusive of bad faith.
In addition, nothing in this case
indicates that the Respondent registered the domain name primarily for the
purpose of selling, renting,
or otherwise transferring the domain name
registration to the Complainant. The Respondent's objective does not seem to be
to prevent
the Complainant from using the mark as a domain name, nor to disrupt
its business and create confusion. There is not an iota of proof
of Respondent
having ever engaged in such a behavior. Noteworthy, the mark KALAMAZOO has been
used by other businesses situated in
the region of Kalamazoo, Michigan and
there has been no evidence that
Complainant has challenged or complained of such use by third parties. In connection thereto, see Int’l Data
Group, Inc. v. Applied Media Cos., D2000-0191 (WIPO June 6, 2000), where it
was found that the registration of a domain name identical to a registered mark
is not
bad faith if the Respondent did not know of Complainant, the mark is not
a coined word, nor is a particularly well-known or famous
mark except in the
market segment the Complainant serves and, importantly, if the Complainant's
mark is a common English word that
could also be used to refer to other
products.
For all of the above, Complainant has
failed to meet its burden that the domain name had been registered or was being
used in bad
faith by Respondent.
DECISION
For the foregoing reasons, the Panel
concludes that:
-
The domain name
registered by the Respondent is identical
to the trademark to which the Complainant has rights;
-
The Respondent has no rights or legitimate interest in
respect of the domain name; but
-
The domain name
has not been registered and is not
being used by the Respondent in bad faith.
The Complainant having failed to meet its burden on at least one of
the three elements, which need to be proven cumulatively under the STOP Policy; accordingly, the Panel dismisses the Complaint. Further challenges under the STOP Policy
against this domain name shall be permitted.
Jacques A. Léger,
Q.C, Panelist
Dated: June 27, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/970.html