1st Aug 2002
START-UP TRADEMARK OPPOSITION POLICY
computer.biz v Thomas Manski
Claim Number: FA0205000114300
Complainant is computer.biz, Piscataway, NJ (“Complainant”) represented by William Montgomery. Respondent is Thomas Manski, Fort Walton Beach, FL (“Respondent”) represented by Ari Goldberger.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <computer.biz>, registered with SITENAME.COM, LLC.
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.
David P. Miranda, 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 May 16, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.
On May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 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 June 12, 2002.
Complainant’s additional submissions were received on June 18, 2002. Respondent’s additional submissions were received on June 25, 2002.
On July 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed David P. Miranda as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The Complainant contends that it has common law trademark rights to “computer.biz” based upon its use and registration of that name as a tradename with the Middlesex County Office Clerk’s Office in the State of New Jersey on February 27, 2001 for computer sales, services, upgrades, computers parts and networking; and has used the name “computer.biz” in its website is located at <computerdotbiz.com> since September 2001. The Complainant contends that the Respondent received notification of the .biz Intellectual Property claim conflict from NeuLevel providing formal notification of complainant’s IP claim, prior to registration of the<computer.biz> domain. The Complainant contends that the Respondent may have registered the domain for the bad faith purposes of selling, or renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant. The Complainant contends that the Respondent previously registered <sportspepsi.com>, the word PEPSI is a registered trademark of PepsiCo, Inc., and on at least in one occasion Respondent invited anonymous bids to purchase the domain name, <sportspepsi.com>.
The Respondent contends that Complainant has no basis for common law trademark rights to “computer.biz” because the disputed domain name incorporates the common word “computer” which is generic. The Respondent contends that Complainant is using the name “computer.biz” generically because Complainant’s business is basically buying and selling used computers. The Respondent contends that prior to registration of the domain he never heard of the Complainant and registered the domain <computer.biz> for the purpose of a website that has news about and links to computer hardware, computer software, the Internet and computer services. The Respondent provides copies of a preliminary website it has developed for <computer.biz>. The Respondent admits that it registered the domain <sportspepsi.com> for the purpose of presenting it to Pepsi for commercial purposes. The Respondent also contends that the prior offer for sale of <sportspepsi.com> was made by Register.com and not by Respondent. Respondent contends that Complainant is engaging in reverse domain name hijacking.
C. Additional Submissions
Also received were Complainant’s Additional Response and Respondent’s Additional Response submitted in accordance with the Forum’s STOP Supplemental Rule No. 7. These additional submissions were carefully reviewed and considered for the purposes of this decision. The Complainant contends that the Respondent has committed “perjury” in its Response and all Respondent’s allegations and statements should be regarded as being unsupported. The Complainant contends that the Respondent did in fact have control over the website <sportspepsi.com> and has engaged in the practice of registering domain names containing trademarks of others. The Complainant further contends that the tradename computer.biz is distinctive in identifying its goods and services and there is strong customer identification in Piscataway, New Jersey where Complainant has used the mark, citing to activities that include flyers in the community, using the name <computerdotbiz.com> as its domain, joining the local Chamber of Commerce and sponsoring the Piscataway Little League.
In it’s Additional Response, Respondent denies having committed perjury himself because the Complainant has not established that Respondent has made any false statement. The Respondent further argues that Complainant’s use of the word computer is generic and the evidence submitted by Complainant is not sufficient to establish distinctiveness.
Because Complainant has not sufficiently established trademark rights in the mark computer.biz, the Complaint must be dismissed. First, Complainant does not hold a registered trademark in computer or computer.biz. Second, Complainant has failed to demonstrate that the mark has acquired secondary meaning in relation to the Complainant such as to common law rights to the mark. Respondent has failed to establish any rights to or legitimate interests in the domain name.
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
The domain name <computer.biz> is identical to the name which Complainant claims rights to. The Complainant does not have a trademark registration for “computer.biz” or “computer” and has failed to establish secondary meaning such as to establish common law rights to the name.
For trademark purposes, a top level domain, such as .biz does not have any source-indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address and the average person familiar with the Internet recognizes the format or domain name and understands that the top level domain .biz is a part of every URL. Trademark Manual of Examining Procedure, Section 1215.02 (TMEP 3rd Edition, Rev. June 2002).
Complainant has a difficult burden to meet in order to establish common law trademark rights to a common word such as “computer.” Generic terms must be analyzed in connection with the kind of products or services identified with the mark. So for example, the word “apple” is not generic when used to identify computers but it would be generic if used to identify apples. “A generic term can achieve distinctive force when due to its use and recognition by the consuming public the word obtains a secondary meaning that allows it to identify products or services without any risk of confusion in the market. In this case the generic term can become a trademark.” Dana Chase Publications v. RGNAMES, FA 112441 (Nat. Arb.Forum 2002). To this end Complainant must prove that its use of its name has added to the generic term such recognition among consumers that it is immediately identified by consumers with its products or services. In this case the Complaint is using the word computer.biz generically to describe its computer business, and it has failed to demonstrate sufficiently strong identification of its mark to establish secondary meaning. Although a Complainant in a proceeding such as this may establish common law rights to a mark, it has failed to do so here.
Respondent’s Rights or Legitimate Interests
The only rights or legitimate interests that the Respondent claims to the disputed domain name is based upon its alleged preparations to use the domain name in connection with the bonafide offering of goods and services, namely a website about computers. In support of its contention that it plans to use the domain name for a website about computers, it provides the Affidavit of Thomas Manski, stating that he developed the website for computer.biz which will be hosted at the URL <computer.biz> once this proceeding is resolved. In support of this contention copies of several pages from what appears to be a website located at the domain <newdogsnewtricks.com> from June 11, 2002 are attached as an Exhibit to Respondent’s papers.
Under the STOP Policy paragraph 4 (c) the Respondent may demonstrate its rights or interest in domain name by proving, that before any notice to the Respondent of the dispute, its use of or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bonafide offer of goods and services. Although the operation of a website may fulfill the “use of or demonstrable preparations to use” requirement of the STOP Policy, Respondent has failed to establish or even allege that it began its preparations “before any notice to the Respondent of the dispute”. In this case the print out of the Respondent’s proposed web page is dated June 11, 2002 and the Complaint was filed on May 16, 2002. Furthermore, notice was provided to Respondent of the Complainant’s claim as early as March 12, 2002 when it received notification of the .biz Intellectual Property Claim Conflict. Respondent has failed to provide or even allege use or demonstrable preparations to use the name prior to either of those dates. Thus, Respondent has failed to establish any rights or legitimate interest in the domain name.
Registration or Use in Bad Faith
As contended by Complainant, Respondent has registered many domain names, some of which are similar or contain the trademark of others and some of which have been offered for sale. Apparently, a domain registered with Register.com is provided with a “Coming Soon” page which among other things, solicits offers for sale of the domain name. This “Coming Soon” page was in use for Respondent’s domain <sportspepsi.com>. While the Respondent did not commit “perjury” as contended by Complainant, he failed to acknowledge his ability to disable the “Coming Soon” page. A finding of whether the Respondent has acted in bad faith with respect to this domain name is not required, since the Complaint has been dismissed. Under all the circumstances it is conceivable that a subsequent challenge could establish Respondent’s bad faith.
Reverse Domain Name Hijacking
Finally, Respondent contends that Complainant has engaged in “reverse domain name hijacking”. In accordance with STOP Rule 1, reverse domain name hijacking means using the STOP Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. This is a serious charge that should not be alleged without factual support. There is no evidence that Complainant acted in bad faith in bringing this Complaint. Complainant has not engaged in “reverse domain name hijacking” in this proceeding.
Complainant’s Complaint is hereby dismissed for failure to establish common law trademark rights to computer.biz. Respondent has failed to establish any rights or legitimate interest in the domain name and subsequent challenges under the Policy against this domain name shall be permitted.
David P. Miranda, Panelist
Dated August 1, 2002