6th Aug 2002

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Marco Publishing Corporation v. Blacker Media

Claim Number:FA0205000113977

PARTIES

Complainant is Marco Publishing Corporation, Houston, TX (“Complainant”) represented by Stephen H. Sturgeon, of Law Offices Of Stephen H. Sturgeon & Associates, PC.Respondent is Blacker Media, Los Angeles, CA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cars.biz>, registered with Signature Domains.

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.

Hon. Charles A. Kuechenmeister (Ret.) is the 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 May 10, 2002; the Forum received a hard copy of the Complaint on May 13, 2002.

On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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”).

On June 7, 2002, Respondent requested an extension of the Response deadline, which was granted, giving Respondent until July 1, 2002 to respond.

A timely Response was received and determined to be complete on July 1, 2002.

Complainant’s additional submission was received on July 8, 2002.

Respondent’s additional submission was received on July 15, 2002.

Respondent tendered a second additional submission after the deadline for submissions expired.Because this submission was untimely and contained no new material facts, the Panel did not consider it.

On July 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.Complainant

Complainant owns a current and valid Canadian trademark No. TMA 414881 for the word CARS and has owned this mark since October 1, 1999.

Complainant operates a consulting service in the car industry and publishes a periodic newsletter entitled “Cars.”Complainant plans to offer these and other services in the future on the site <www.cars.biz> should the name be granted.

Complainant has been unable to find any registrations, trademarks, service marks or properties owned by Respondent or any use of the mark CARS by Respondent in any city, state, federal or international jurisdiction.

Respondent is believed to be a “cyber squatter” and has registered and been granted (for the time being) a number of very valuable internet domain names in the .BIZ category, including, but not limited to:

<cars.biz>

<law.biz>

<realestate.biz>

<insurance.biz>

<travel.biz>

<finance.biz>

<games.biz>

<gambling.biz>

<attorney.biz>

It is believed that Respondent has never used the mark CARS, has no real intention to use the mark CARS and has no trademark or service mark for the word CARS.

Respondent registered <cars.biz> for the purpose of selling, renting, or otherwise transferring that name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out‑of‑pocket expenses directly related to the domain name.

If Respondent is granted <cars.biz>, it will create a likelihood of confusion with Complainant’s Canadian trademark TMA 414884 as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

B.Respondent

Complainant has no rights to CARS as a trade name.The Canadian trademark for CARS currently held by Complainant is registered to cover financial services, namely the purchase and sale of receivables and the issuance to the public and the guarantee of debt and equity securities.

The trademark does not cover Complainant’s automotive consulting services or a newsletter about cars.CARS is a generic or descriptive word and cannot qualify for trademark protection in the application for which Complainant proposes to use it.

Complainant’s Canadian trademark only protects its rights in Canada, and there is no evidence that Complainant, a Texas-based publisher, even does business in Canada.

Respondent has made demonstrable preparations to use <cars.biz> in connection with a bona fide offering of goods or services.Respondent is using <cars.biz> in connection with a website about cars and has developed a preliminary site.The site is not yet developed because the domain name is on hold by the registry and is subject to the STOP process.

Complainant has failed to demonstrate any bad faith by Respondent in its use or registration of <cars.biz>.

C.Additional Submissions

Complainant’s additional submission alleges that Respondent failed to offer any allegations or proof that its “demonstrable preparations” to use <cars.biz> occurred before notice of the dispute.

Complainant further alleges that Respondent had notice of Complainant’s IP claim at the time it offered to register <cars.biz> and elected to register it notwithstanding such notice.This fact, coupled with its registration of the other domain names cited in the Complaint, is strong evidence that Respondent registered or seeks to register these names solely to warehouse them for the purpose of selling, renting or otherwise transferring them for valuable consideration in excess of its costs.

Respondent’s additional submission alleges that Respondent’s notice of Complainant’s IP rights does not support an allegation of bad faith because the term CARS is so descriptive and so generic as to preclude any person from acquiring the exclusive right to use it as a trademark in connection with goods or services relating to cars.This completely eliminates any inference of bad faith from Respondent’s decision to register <cars.biz>.

FINDINGS AND 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 MarkPolicy 4(a)(i)

Complainant’s Canadian trademark for CARS covers financial services, namely the purchase and sale of receivables and the issuance to the public and the guarantee of debt and equity securities.See, attachments to Complaint and Complainant’s Additional Submission.It has no relevance whatever to and cannot be used as a mark for Complainant’s automotive consulting services or a newsletter about cars.In connection with services having to do with cars, CARS is a generic or descriptive word and does not and cannot qualify for trademark protection.Complainant submitted no evidence to demonstrate that the name CARS has become associated with Complainant such that it identifies Complainant or its services in some unique way.See fabric.com v. Lin Zansong, FA 109701 (Nat. Arb. Forum, June 1, 2002) (“fabric” is generic, particularly in its use by the Complainant selling fabric to Internet customers, and Complainant has no protectable rights in the mark); see also Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002)(dismissing the Complaint because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).

Based upon the foregoing, the Panel finds and determines that Complainant has no rights in <cars.biz>.

Respondent’s Rights or Legitimate InterestsPolicy ¶4(a)(ii)

Respondent claims that it has a right or legitimate interest in <cars.biz> pursuant to Policy ¶4(c)(ii), which provides that a Respondent can acquire such interest if it demonstrates, “before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”The evidence supporting this claim consists of Respondent’s allegation that it registered <cars.biz> with the intent to use it for a website about cars and developed a preliminary site.Response, p. 5, and Exhibit 1 to Joshua Blacker Declaration.Notwithstanding the requirement in Policy ¶4(a)(ii), and the clear invitation of Complainant in its additional submission to do so, Respondent failed to tender any evidence that this work occurred before notice to the Respondent of this dispute.It is not enough that a Respondent intended to use the name.It must provide some proof that it did so or made demonstrable preparations to do so before it received notice of the dispute.Respondent had notice of Complainant’s IP claim at least as of March 27, 2002 when it registered the name.See, .BIZ Registry WHOIS Data.From Respondent’s allegations and the one-page exhibit consisting of a “draft” website document attached to the Joshua Blacker Declaration it is evident that Respondent took some action in preparation to use <cars.biz> in connection with a commercial website offering information and services about cars.Completely absent is any evidence as to when that work was done in relation to Respondent’s notice of this dispute.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).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.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).

In the absence of any evidence as to the chronology of relevant events, the Panel finds and determines that Respondent has no right or legitimate interest in respect of <cars.biz>.

 

Registration or Use in Bad FaithPolicy P 4(a)(iii)

Since the Complainant failed to demonstrate protectable rights in a mark identical to<cars.biz>, it is not necessary to determine if Respondent registered that name in bad faith.

 

DECISION

The domain name <cars.biz> is not ordered transferred from Respondent to Complainant and the Complaint is dismissed.Pursuant to Policy ¶4(l)(ii)(3), subsequent challenges against <cars.biz> shall be permitted.

Honorable Charles A. Kuechenmeister (Ret.)

Dated:August 6, 2002