27th Jun 2002

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Leap Wireless International Inc. v. Mantis Business Solutions Inc.

Claim Number: FA0204000112467

PARTIES

Complainant is Leap Wireless International Inc., San Diego, CA (“Complainant”) represented by Mark T. Lee, Senior Legal Counsel of Cricket Communications Inc..Respondent is Mantis Business Solutions Inc., Washington, DC (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cricket.biz>, registered with Onlinenic, Inc. d/b/a China-Channel.com.

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.

Hugues G. Richard 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 26, 2002; the Forum received a hard copy of the Complaint on May 3, 2002.

On May 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 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 30, 2002.

Complainant’s Additional Submission was received and determined to be complete on June 4, 2002. Respondent’s Additional Submission was received and determined to be complete on June 10, 2002.

On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hugues G. Richard as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Similarity of Complainant’s Trademark and the Domain Name in Dispute

Complainant contends it owns trademark registrations for the CRICKET trademark. The domain name in dispute is identical to Complainant’s registered trademarks in that it incorporates Complainant’s CRICKET trademark. The addition of the generic top level domain designation “.biz” does not distinguish the domain name in dispute from Complainant’s registered trademark.

No Rights or Legitimate interest

Complainant contends it has devoted years of substantial effort and spent significant sums of money to develop and promote its CRICKET mark. It states it has developed substantial brand recognition for its mark including substantial goodwill among the consumers of its services and therefore its mark has become distinctive and famous.

Complainant says it has established its trademark rights in the CRICKET mark as early as March 1999 and that Respondent registered the domain name in dispute on March 27, 2002.

Complainant alleges that Respondent does not own and is not the beneficiary of a trade or service mark that is identical to the domain name in dispute in connection with a bona fide offering of goods or services. It claims it does not appear that Respondent has been commonly known by the domain name in dispute.

Registration in Bad Faith

Complainant contends that Respondent did not have a good faith basis for registering the domain name at issue. It claims Respondent registered the domain name in dispute to prevent Complainant from reflecting the mark in a “.biz” domain name and/or to otherwise disrupt Complainant’s business.

B. Respondent

Complainant’s Mark and Disputed Domain Name are Identical

Respondent contends that this issue is never in dispute in a STOP proceeding and is not in dispute here.

Respondent Rights and a Legitimate Interest in the Domain Name

Respondent contends that despite Complainant’s allegation that Respondent has no trademark or trademark application for CRICKET, it fails to satisfy its burden of proving the lack of a legitimate interest.

Respondent alleges that it registered the disputed domain name for the purpose of developing a website related to cricket tournaments as part of its iTournament network. Presently, the preliminary design for the iTournament cricket site is hosted at the URL <crickettournament.com> this is the reason why it hasn’t yet used the domain name. It contends that the intent to use a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods and services.

Respondent claims its burden is very small; all it needs is a “plausible explanation”. It asserts that it has engaged in substantial efforts to launch its iTournament network and its cricket component.

Respondent adds that CRICKET is a common word that refers to a specific outdoor game. This word is subject to substantial third party use. There are over 1.1 million third-party web pages containing the term CRICKET and over 2000 third-party Internet domain names containing the word CRICKET. It claims that the registration of a domain name incorporating merely a common word to use for a business establishes its legitimate interest.

Respondent states that Complainant does not have exclusive rights in the common word CRICKET.

Registration and Use in Bad Faith

Respondent contends that there is no evidence that it registered the disputed domain name with the intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers.

Respondent claims that it does not need the permission of Complainant to use the common word CRICKET. Respondent alleges that under the UDRP Policy, where a trademark is a common term, bad faith can only be proven if there is evidence that Respondent registered the domain name “specifically to sell to the Complainant”, or that the “value of the domain derived exclusively from the fame of [the] trademark”. It supports that there is no evidence of such intent on its part or fame of Complainant’s mark.

Respondent also contends that the fact that there are many users of the word CRICKET demonstrates that the term can be used by others in good faith.

Respondents claims to have never heard of Complainant or its mark prior to this Complaint and there is no evidence contrary to that.

Reverse Domain Name Hijacking

Respondent submits that this is a case of Reverse Domain Name Hijacking because Respondent has a legitimate interest in the disputed domain and Complainant has put forth no evidence to support bad faith on the part of Respondent and Complainant has no exclusive rights in a common word such as CRICKET.

C. Additional Submissions

Complainant’s Additional Submission

Complainant alleges that the fact that Respondent supposedly intends to start an online network for games of skill does not allow Respondent to incorporate Complainant’s federally protected trademark into a domain name that is designed “to help generate Internet traffic” for Respondent’s tournament site.

Moreover, Complainant alleges Respondent is of bad faith because it admits that it intends to use the domain name at issue to “generate internet traffic” for its other websites. Complainant explains that the reason for commencing this proceeding is because of the way Respondent intends to use the domain name in dispute.

Complainant states that Respondent has never been known by the term CRICKET and has never used the term CRICKET in commerce, so Respondent has no legitimate rights in or to the CRICKET mark.

Complainant asserts that it is not disputed that it owns federally-protected trademark rights to the CRICKET mark and has used such trademark extensively in commerce. It is not because the word CRICKET can have several meanings that Respondent was free to misappropriate Complainant’s CRICKET trade mark. It says its trademark is a suggestive trademark because there is nothing about the term CRICKET that explicitly describes the goods and services that Complainant offers using the CRICKET mark. Being suggestive, it claims the CRICKET mark enjoys strong trademark protection. Additionally, it states there is no evidence that Respondent had used the term CRICKET in any way prior to registering the domain name in dispute. Also, it states there is no evidence that Respondent’s business had ever been known by reference to the word CRICKET or the term <cricket.biz>. Therefore, Complainant concludes Respondent does not have any legitimate rights in CRICKET or <cricket.biz>.

In regards to Respondent’s argument that it did not act in bad faith in registering the domain name in dispute because cricket supposedly will be one of the sports that will be part of the network of sites that Respondent supposedly is in the process of developing, Complainant alleges that this argument fails because thinking or preparing to use the domain name in dispute does not negate a finding of bad faith.

In addition, Complainant contends that the Notice provided to Respondent under the STOP Policy that Complainant has filed an IP Claim for the CRICKET mark precludes any possibility of registration in good faith of the domain name in dispute.

Finally, Complainant contends that Respondent’s objective of generating traffic for iTournament will place Respondent in direct competition with Complainant for Internet traffic generated using the term CRICKET. This might permit Respondent to take advantage of the goodwill and recognition that Complainant has developed for the CRICKET mark. Complainant states that this is an example of bad faith.

Respondent’s Additional Response

Respondent contends that Complainant’s additional submission adds nothing to its initial Complaint. Respondent claims that Complainant is still without evidence of bad faith registration or use, or evidence that Respondent had knowledge of its trademark CRICKET when it registered the domain name <cricket.biz>.

Respondent restates that there are over 1.1 million third party uses of CRICKET on Google.com and many pending third-party trademark registrations incorporating that word.

Moreover, Respondent makes clear that it does not only consider using the domain in dispute. It has produced a complete business plan for an online tournament business, which includes a website about the sport of cricket. A website at <crickettournament.com> has already been setup. Respondent states that all that is required to prove a legitimate interest under the STOP Policy is “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”. It claims that the business plan was in place long before the arisen of the dispute. It says it has registered dozens of sports and game related domains for its business.

Respondent contends that there is no reason to draw the conclusion that registration of the disputed domain name was in bad faith because Respondent and Complainant are not competitors.

Also in relation to bad faith, Respondent insists that there was no bad faith simply because it proceeded to register the disputed domain name despite Complainant’s existing IP claim. It bases itself in a case cited by Complainant that specified that “each case should be considered on all of the facts and circumstances”. It says that in the circumstances of this case, the only conclusion to be reached is that Respondent registered a common word for a sport to use for the bona fide operation of a sports website in good faith.

Finally, Respondent alleges that registering sport-related domain names to drive traffic to its website does not establish bad faith unless there is evidence of intent to confuse users and benefit from traffic intended for Complainant. This cannot be presumed where the domain name incorporates a common word like CRICKET.

 

FINDINGS

A routine verification by the Panel of the Trademarks Electronic Search Systems (TESS) of the United States Patent and Trademark Office has revealed that the three CRICKET trademarks, registration # 2359369, # 2359370 and # 2363821, on which the Complainant bases its Complaint are not registered in its name but in the name of Cricket Communications Inc. This is a fact which was not raised by either party, we will therefore not take it into consideration for the purpose of deciding the present Complaint.

Having reviewed the evidence submitted by Respondent (none was submitted by Complainant) and after having reviewed the written representations of the parties, the Panel makes the following findings:

Complainant does have rights in the mark CRICKET for the wares and services it deals in or with. Complainant has used the CRICKET trademark in association with wireless communication apparatus, with retail store services featuring wireless communication apparatus and with telecommunication services. However, Complainant has failed to show that its reputation extended beyond these services and products. Complainant has not submitted any evidence supporting the finding that its trademark CRICKET is a famous trademark. There is no evidence of the effort it has devotedto promote and develop its CRICKET mark. CRICKET is a common word and Complainant cannot have a monopoly over this word.

The evidence submitted by Respondent (exhibits 1, 2, 3, 4, 5, 6, 7, 8 and 9) supports the finding that Respondent has rights and legitimate interests in the mark CRICKET since this word is a common word that represents, amongst other things, a well known sport and that is widely used by a variety of people in different contexts (exhibits 6, 7, 8 and 9).

The Panel also finds that Respondent’s evidence supports its allegation that it has registered over 200 common word domain names, under either Mantis Business Solutions inc. or iTournament LLC, incorporating various sports and games of skill to help generate Internet traffic from users interested in the various activities (exhibit 5). Also, the evidence shows that Respondent has demonstrated serious preparations to use the term CRICKET in relation to a bona fide offering of services because of its engagement in substantial efforts to launch its iTournament network and its cricket component (exhibits 2, 3 and 4)

The Panel finds that Respondent did not register the disputed domain name in bad faith to sell to Complainant or to any party, to prevent Complainant from reflecting its mark in a corresponding domain name nor to disrupt Complainant’s business or to confuse consumers (exhibit 1).

The Panel finds no Reverse Domain Name Hijacking because it considers the Complaint to have been misconceived rather than brought in bad faith.

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

On this first issue, the Panel finds that Complainant does have rights in the mark CRICKET which is identical to the disputed domain name, given that Respondent has not disputed this allegation of fact of the Complainant. Noteworthy though that the 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 CRICKET is also a sport and an insect. It is a word that is used and will continue being used over and over again by many individuals or entities in different contexts. Complainant cannot claim the monopoly of such a common term, especially in the absence of evidence that the trademark has become famous.

Respondent’s Rights or Legitimate Interests

The Panel can rely on any of the following circumstances, without limitation, to find that Respondent has rights or legitimate interests in the domain name :

(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or;

(ii) Before any notice to Respondent of the dispute, Respondent’s 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; or

(iii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.

(STOP Policy ¶ 4(c)(i) – (iii).)

The Panel refers to the decision in Woodworker’s Supply Inc. v. Roloff Marketing Inc,[1] where it was decided that ownership of a trademark by a respondent is not a prerequisite for having rights or a legitimate interest in or to the domain name. As the Panel stated: “Complainant [] has failed to present any authority to the effect that Respondent must actually own trademark rights in and to the domain name in question in order to have `rights or legitimate interests`, as required by STOP Policy 4(a)(ii).” Moreover, Respondent has demonstrated preparations to use the domain name in connection with a bona fide offering of services. It is clear that Respondent has engaged in substantial efforts to launch its iTournament network and its cricket component (exhibit 2).

Although panels have held that registration of an infringing domain name in order to opportunistically trade on the goodwill of the Complainant’s mark does not constitute a bona fide offering of goods and services, nothing shows in the case at hand of such intention of Respondent. Both parties offer services and goods that are different and it is not likely that users will conclude to an affiliation between Complainant and Respondent’s website.

Based on the precedents and on the above findings, the Panel is of the view that the Complainant has not discharged its burden of proving that Respondent has no right or legitimate interest in the disputed domain name and Respondent has satisfied the Panel that it has rights or legitimate interests in the disputed domain name.

Registration or Use in Bad Faith

This element does not need to be examined given the fact that Complainant has failed to fulfill its burden of proof under the previous title.

Reverse Domain Name Hijacking

As previously mentioned, the Panel finds no Reverse Domain Name Hijacking because it considers the Complaint to have been misconceived rather than brought in bad faith. See Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited[2].

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 although not exclusive ones; but

The Respondent has rights or legitimate interest in respect of the domain name;

The Panel does not find that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.

The Complainant has 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. Subsequent challenges to this domain name, as against the Respondent, under the STOP Policy shall not be permitted against this domain name.

Hugues G. Richard, Panelist
Dated: June 27, 2002

 

 

[1] FA 103055 (Nat. Arb. Forum Jan. 30, 2002).

[2] FA 102972 (Nat. Arb. Forum Feb. 23, 2002).