8th Jul 2002

 

 

START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Masterpiece Artist Canvas Inc v. ATN

Claim Number: FA0204000112528

 

PARTIES

Complainant is Masterpiece Artist Canvas Inc, San Francisco, CA, USA (“Complainant”) represented by John M. Sooklaris. Respondent is ATN, Phoenix, AZ, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <Masterpiece.biz>, registered with Network Solutions, Inc.

 

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.

 

Dennis A. Foster 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 27, 2002; the Forum received a hard copy of the Complaint on May 1, 2002. On May 3, 2002 the Forum had the Complainant delete “www” from the disputed domain name in the Complaint.

 

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 28, 2002.

 

On June 24, 2002, pursuant to STOP Rule 6(b), the Forum appointed Dennis A. Foster as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

–Complainant contends that it is the owner of a registered United States Trademark in “Masterpiece” (the “Complainant Trademark”) for the manufacture, sale, and marketing of products related to canvases for painting for artists (Exhibit A).

 

–The Complainant Trademark is the second most widely used name for canvases in the industry and business of selling canvases for artists in America (based upon units sold). The mark is used extensively on Complainant’s products, brochures, price lists, catalogs, correspondence, trade journals, signage, and advertising in nationally distributed monthly art material magazines.

 

–Respondent’s domain name is identical to the Complainant Trademark and to Complainant’s registered domain name, <masterpiecearts.com>. The Complainant Trademark was registered before Respondent registered the disputed domain name.

 

–Respondent does not own rights in a trade or service mark similar to the disputed domain name and has not done business under the same or a similar name.

 

–Respondent has no rights or legitimate interest in the disputed domain name. During a phone call, the Respondent’s president was evasive about Respondent’s use of the word “Masterpiece” on any of Respondent’s products or services and said that Respondent “may or may not use it [the disputed domain name]” and “haven’t decided what to do with it [the disputed domain name]”

 

–The Respondent registered the disputed domain name in bad faith. Respondent registered the disputed domain name with the intent of reselling it to Complainant at a price far in excess of its cost to Complainant, because Respondent’s President said over the phone that Respondent would consider Complainant’s offer to buy the disputed domain name.

 

–Further evidence of Respondent’s bad faith is the e-mail message sent to Complainant by Respondent stating “We intended to use it [the disputed domain name]in some manner along with our business” and “the web name is not for sale,” which Complainant contends contradicts the earlier phone call responses of Respondent’s President.

 

B. Respondent

–Respondent is a legitimate telecommunications company established in 1984, with 6,000 dealers in the U.S. and customer phone billings of approximately $20 million per year.

 

–Respondent registered the disputed domain name because it incorporates the common word “masterpiece”, which is suitable to use for Respondent’s dealer support network, a software program Respondent is developing at a cost in excess of $120,000.

 

At the time of registration and when Complainant contacted Respondent’s president, he had not yet run the name “Masterpiece” by the rest of his executive team for their opinion. Consequently, Respondent’s president did not have an answer for Complainant’s phone call inquiry.

 

–“Masterpiece” is a very common word with substantial third party use and Complainant does not, and cannot, have exclusive rights to it. The domain names <Masterpiece.com>, <Masterpiece.net> and <Masterpiece.org> are owned by parties other than Complainant.

 

When it registered the disputed domain name, Respondent had never heard of Complainant and did not intend to resell it to Complainant. Respondent did not offer to sell the disputed domain name to Complainant; Complainant offered to buy the disputed domain name from Respondent. Respondent has never sold a domain name.

 

–Complainant filed the Complaint in bad faith and is guilty of reverse domain name hijacking. Complainant knew that Respondent had a legitimate interest in the disputed domain name, and attempted to bait Respondent into a trap with a disingenuous offer to buy the disputed domain name.

 

FINDINGS

 

Complainant is a well-established maker of canvas used by artists, and uses the Complaint Trademark in various ways to merchandise its products. Complainant owns a United States Trademark registration in “Masterpiece” (first used in 1975) for the manufacture, sale, and marketing of products related to canvases for painting for artists. “Masterpiece” is a common English language word which, among other things, connotes excellence.

 

Respondent, a telecommunication company with yearly sales of several million dollars, is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2000..

 

On April 25, 2002, Complainant telephoned Respondent to inquire about Respondent’s use of the disputed domain name. Respondent did not give Complainant a clear explanation as to the current or planned use for the disputed domain name. Complainant offered to buy the domain name from Respondent, which offer Respondent agreed to consider. On April 26, 2002, after another telephone call to the same effect as the first, Respondent sent Complainant a message by e-mail (Exhibit Q of the Complaint) stating Respondent intended to use the disputed domain name in conjunction with its business and that the domain name was not for sale.  

 

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:

 

(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 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 or is not identical to the mark in which the Complainant asserts rights.

 

Complainant’s Rights in the Mark

 

Since it owns the registration of the trademark “Masterpiece” in the United States (U.S. Registration No. 73766010, dated October 17, 1989, Complaint Exhibit A), Complainant has rights in the mark. The Complainant has also submitted a number of exhibits showing its use of the “Masterpiece” mark in its business (Complaint Exhibit B).

 

Thus, the Panel finds that Complainant has carried its burden of proof with respect to STOP 4(a)(i).

 

Respondent’s Rights or Legitimate Interests

 

Respondent has not contended or attempted to show to the Panel that it is commonly known by the domain name (STOP at 4(c)(iii)) or that Respondent is the owner of a trade or service mark identical to the disputed domain name (STOP at 4(c)(i)).

 

Respondent has failed to provide evidence to the Panel that Respondent has actually made use of the disputed domain name. However, Respondent does contend that, before notified of this dispute, it had made preparations to use the disputed domain name in connection with a bona fide offering of goods and services (STOP, para 4(c)(ii)). Specifically, Respondent claims under oath to have spent in excess of $120,000 to develop a dealer support software program to be accessed through a web site at the disputed domain name (Exhibit 1 to Response). The Panel takes note that it would not be unusual for any company such as Respondent’s to use a generic English word like “masterpiece” in connection with its offerings in an attempt to associate those offerings with excellence (much like the words “deluxe”, “special” and “premium” are constantly used with respect to goods or services).

 

Complainant has presented no evidence to the Panel to contradict Respondent’s contended preparations, other than to assert that (i) when Complainant first contacted Respondent’s president by telephone, he did not state that Respondent intended to make such use of the disputed domain name and (ii) thus Respondent’s later claim of previously intended use of the disputed domain name is dishonest. 

 

The Panel concludes, however, that a company’s officers are not required to disclose to third parties over the telephone the company’s business plans. In fact, such action might be considered bad business practice. For example, the record in this case does not reflect that Respondent could be assured that Complainant was not in some way allied with a competitor of Respondent who was attempting to obtain competitive information.

 

Respondent has admitted that at the time Complainant placed the telephone call, that Respondent, as opposed to Respondent’s president, had not formed the intent to use the disputed domain name as Respondent contends. However, the Panel finds that, in the course of business, a company’s officer may have a legitimate interest in acquiring a domain name in anticipation of the acceptance of his business plan by the company. Otherwise, that officer could be subject to considerable embarrassment if, after having put forth a business proposal to his colleagues, he could not obtain the domain name upon which it was predicated.   

 

In accordance with the foregoing, the Panel finds that the Complainant has not sustained its burden in establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Since STOP requires Complainant to prevail under each section of STOP at 4(a)(i-iii), the Panel does not need to discuss 4(a)(iii), i.e., whether Respondent registered or is using the disputed domain name in bad faith.

 

Reverse Domain Name Hijacking

 

This leaves the issue raised by Respondent of reverse domain name hijacking. Respondent claims that Complainant should have known that Respondent had a legitimate interest in the disputed domain name and that Complainant tried in bad faith to manufacture evidence of bad faith against Respondent by making a disingenuous offer to buy the disputed domain name. However, Respondent has not contradicted Complainant’s contention that Respondent’s president was at least evasive in response to Complainant’s inquiries about Respondent’s intended use of the disputed domain name. As a result, Complainant was not wholly unreasonable to believe that there was no intended use, and that Respondent’s consideration of Complainant’s purchase offer was Respondent’s real objective in acquiring the disputed domain name. Thus, the Panel concludes that there is insufficient evidence in the record to sustain a finding of bad faith on the part of Complainant (Rule 15(d)).

 

DECISION

 

The Panel has found that Respondent demonstrated that it has a legitimate interest in respect of the disputed domain name <Masterpiece.biz> per STOP at section 4(a)(ii). Therefore, pursuant to STOP section 4(i) and STOP Rule 15, the Panel orders that the disputed domain name <Masterpiece.biz> remain registered to the Respondent, ATN. Furthermore, subsequent challenges to this domain name against Respondent under the STOP Policy shall not be permitted (STOP 4(I)(ii)(2) .

 

 

Dennis A. Foster, Panelist
Dated: July 8, 2002