15th Jul 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Osborne Clarke v. Blacker Media
Case No. DBIZ2002-00262
- The Parties
The Complainant is Osborne Clarke, an international law firm with its principal place of business at 50 Queen Charlotte Street, Bristol, BD1 4HE, United Kingdom.
The Respondent is Blacker Media located at 609 Coeur D Alene Avenue, Los Angeles, CA 90291, United States of America.
- The Domain Name and Registrar
The contested domain name is <games.biz>.
The registrar is Signature Domains.
- Procedural History
The electronic version of the Complaint was filed on May 28, 2002. The hardcopy of the Complaint form was received on May 30, 2000.
In accordance with Paragraph 4(a) of the STOP Rules, the WIPO Arbitration and Mediation Center (“the Center”) verified that the Complaint satisfies the formal requirements of the STOP Policy, the STOP Rules and the WIPO Supplemental STOP Rules.
Payment in the required amount was received by the Center.
On June 4, 2002, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
On June 21, 2002, the Respondent requested an extension of time for filing a Response in accordance with paragraph 5(d) of the STOP Rules. Paragraph 5(d) provides that at the request of the Respondent, the Center may, in exceptional cases, extend the period of time for the filing of the Response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Center.
By consent of the Complainant, the Center extended the date for the Response to July 1, 2002.
The Respondent filed an electronic copy of a Response on July 1, 2002. A hard copy of the Response was received on July 4, 2002.
On July 5, 2002, the Center contacted John Swinson and requested that he act as panelist in this case. Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On July 8, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 22, 2002.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the STOP Rules; the Response was filed in accordance with paragraph 5(d) of the STOP Rules and Supplemental Rules; the administrative panel was properly constituted.
- Factual Background
The Complainant is a law firm based in the United Kingdom. The Complainant owns the registered trademark “GAMESBIZ” in the United Kingdom (registered on November 17, 2000).
The Respondent has registered the domain name <games.biz>.
- Parties’ Contentions
The Complainant contends, in relation to the Complainant’s business, that:
(a) it is an international law firm dedicated to the interactive entertainment industry. As an essential element to this part of its practice, the Complainant offers legal updates, advice and precedents via its brand “GAMESBIZ”;
(b) the “GAMESBIZ” brand is accessed on the world wide websites: www.gamesbiz.net, www.gamesbiz.biz and www.gamesbiz.co.uk. These websites have been online since September 2000 and provide regular email updates to subscribers; and
(c) the <gamesbiz> websites are recognized industry-wide as a unique and highly valuable resource.
The Complainant further contends that:
(a) its “GAMESBIZ” trademark is identical to the domain name;
(b) the Respondent has no rights or legitimate interests in respect of the domain name because:
(i) the Respondent does not operate a business or other organization under the GAMESBIZ trademark;
(ii) the Respondent does not own any trademark or service make rights for the GAMESBIZ trademark;
(iii) the Respondent has not used or demonstrated any preparation to use the domain name;
(iv) the Complainant has not granted the Respondent any rights to use the GAMESBIZ trademark;
(c) the Respondent registered the domain name in bad faith:
(i) for the primary purpose of selling, renting or otherwise transferring the domain name to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs;
(ii) by engaging in a pattern of registering nine other .biz domain names primarily for the purpose of selling, renting or otherwise transferring the domain names for valuable consideration in excess of its documented out-of-pocket costs (and that this is evidence of a pattern of cybersquatting);
(iii) to prevent the Complainant from reflecting the “GAMESBIZ” trademark in a corresponding domain name;
(d) had the Respondent searched the United Kingdom trademark register, it would have received notice of the Complainant’s “GAMESBIZ” trademark;
(e) the Respondent has failed to show any evidence that it has acted in good faith (despite an email from the Complainant on May 21, 2002 [insert details]).
The Complainant requests that the domain name be transferred to the Complainant.
The Respondent contends that:
(a) the “GAMESBIZ” trademark is not identical to the domain name, and that the “.biz” gTLD should be ignored when considering whether or not the domain name is identical to the Complainant’s “GAMESBIZ” trademark (therefore “games” is not identical to the Complainant’s trademark “GAMESBIZ”);
(b) the word “games” and the domain name are generic and the Complainant is not entitled to claim exclusive rights to a domain name reflecting a generic word;
(c) it was not aware of the Complainant’s “GAMESBIZ” trademark when it attempted to register the domain name;
(d) the Respondent intends to use the domain name in connection with the bona fide offering of goods or services, and has shown demonstrable preparations to use the domain name as a web site to provide news, reviews and consumer information on games and game consoles. Respondent will generate revenues through advertisements, affiliate arrangements and sales of related goods and services;
(e) the Respondent’s legitimate interest is not diminished because the domain name is not yet activated. The domain name is on hold because of the STOP process in deciding the domain name dispute;
(f) the Respondent applied for the domain name in good faith and there is no evidence to suggest otherwise;
(g) it is irrelevant that the Respondent has registered other generic domain names (that incorporate generic words such as <travel.biz>, <realestate.biz> and <law.biz> and this is not evidence of cybersquatting;
(h) the Respondent has no history of selling or leasing domain names and has no intention of selling the domain name; and
(i) the Complainant has engaged in reverse domain name hijacking.
- Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the STOP Policy, as approved by ICANN on May 11, 2001, namely:
(a) the domain name is identical trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
The onus of proving these elements is that of the Complainant.
6.1 Identical to a trademark or service mark
The Panel finds that the Complainant is the owner of the registered trademark “GAMESBIZ” in the United Kingdom.
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. This is different to the test under the UDRP.
The purpose of the STOP Policy is to afford a ready solution for those who have established intellectual property rights in the exact alphanumeric string contained in a proposed new domain name. Unlike cases under the UDRP rules – and the intellectual property law of most countries – it is not enough for the purpose of the STOP rules that the two terms are confusingly similar.
The Complainant’s case is based on its trademark registration for “GAMESBIZ”. The Complainant has not asserted an trademark rights in the word “GAME”. The Panel finds that he coined word “gamesbiz”, unlike the simple generic word “games”, is capable of protection as a trademark.
The issue is: “Is the domain name <games.biz> identical to the trademark “GAMESBIZ” for the purpose of this proceeding?”.
The decision in Easy-Flo Vacuum Systems Ltd. v. InfoSiteServer, FA0204000112530 (Nat. Arb. Forum June 17, 2002) is helpful in this regard. In that dispute, the Panel carefully considered whether the domain name <potatoes.biz> was identical to the complainant’s trademark “potatobiz”. That Panel found that these terms were not identical.
Following the logic of the Complainant’s argument, one would conclude that “world” is identical to “worldcom” and that “fishing” is identical to “fishingnet”. The Panel does not agree.
Therefore, the Panel concludes that the domain name “games” is not identical to the Complainant’s “GAMESBIZ” trademark. Accordingly, the Complaint must be dismissed.
The Panel emphasizes that it is not dealing here with the question of confusing similarity. This may arise in another proceeding. And, because of that possibility, the Panel makes no comment on any other issue.
For the reasons set forth above, the Panel decides that the Complainant fails.
Dated: July 15, 2002