12th Jul 2002
Stream International Inc. v. dotPartners LLC
Claim Number: FA0204000112428
Complainant is Stream International Inc., Canton, MA (“Complainant”) represented by Henry Gitter. Respondent is dotPartners LLC, Livingston, NJ (“Respondent”) represented by Ari Goldberger, of ESQwire.com.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stream.biz>, registered with TLDS, Inc..
The undersigned, Jacques A. Léger Q.C acting as Panelist, 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.
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 April 30, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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”).
Respondent never filed an original Response in this proceeding. However, Respondent’s Additional Submission was received in a timely matter on June 3, 2002 according to the Forum’s STOP Supplemental Rule #7.
On June 28, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jacques A. Léger, Q.C. as single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant’s Rights in the Mark STREAM
Complainant alleges it has been using the mark STREAM since 1995.
Complainant contends the domain name registered by Respondent <stream.biz> is identical to its mark.
Complainant contends to have submitted evidence of three filed applications with the United States Patent and Trademark Office (“USPTO”) covering the STREAM mark (exhibit A).
Complainant contends that its trademark application for STREAM (No. 74,662504) has been approved for registration.
Respondent’s Rights or Legitimate Interests in the Domain Name
Complainant contends Respondent has no legitimate interest in the disputed domain name.
Complainant contends Respondent has made no effort to carry out any of the actions that the Panel may consider as having acquired a legitimate interest in the domain name at issue.
Complainant alleges that a search of numerous business databases and Internet search engines has uncovered no evidence that Respondent has been commonly known by the name STREAM.
Complainant alleges that the search also failed to turn up evidence that Respondent has undertaken any efforts to conduct business under the <stream.biz> domain name or the STREAM mark.
Complainant contends that a search of the United States Patent and Trademark Office records reveals that Respondent has not applied to register the STREAM mark in connection with any goods or services.
Respondent’s Registration of the Domain Name in Bad Faith
Complainant contends Respondent has acted in bad faith in registering <stream.biz>.
Complainant contends a search of the Neulevel registry revealed that Respondent has registered at least 75 “.biz” domain names (exhibit B).
Complainant contends both the number and type of domain names registered demonstrate that Respondent has no intent to conduct business or identify itself by the domain names it seeks to register. Complainant adds it would be implausible for Respondent to argue that it is interested in operating more than a handful of businesses under the domain names that it has registered.
Complainant contends the obvious intent of Respondent in registering these domain names is to offer them for sale to the highest bidder, to “ransom” them back to their respective trademark holders.
While there was no submission as an initial Response, Respondent submitted an additional submission which was accepted by the Forum.
C. Additional Submissions
Respondent’s Additional Response
Complainant’s Rights in the Mark STREAM
Respondent contends Complainant does not have a registered trademark for STREAM, but has merely filed trademark applications for this common word.
Respondent contends Complainant alleges it has been using the mark since 1995, however it has not provided any evidence of such trademark use at all.
Respondent alleges it appears that STREAM is simply a shortened version of Complainant’s company name, Stream International.
Respondent contends because Complainant does not have a registered trademark for STREAM, nor has it provided evidence of common law rights to this common word, the Complaint must be denied.
Respondent argues that Complainant has misrepresented the status of its trademark application to this Panel because while Complainant has alleged that its trademark application for STREAM (No. 74,662504) has been “approved for registration,” the true current status as of March 15, 2002 is that “[t]he application was scheduled to register but has been withdrawn from that status.”( exhibit 6).
Respondent alleges this misrepresentation should be looked at with great suspicion by the Panel and calls into question the entire Complaint.
Respondent’s Rights or Legitimate Interests in the Domain Name
Respondent contends ownership of a trademark by a Respondent is not a prerequisite for having rights or legitimate interests.
Respondent contends it has filed for a trademark for MAINSTREAM TV, which is certainly similar to the Disputed Domain and, at the very least, lends further support, to Respondent’s proof of legitimate interest under paragraph 4(c)(ii).
Respondent alleges it intends to use the Disputed Domain for an Internet based television broadcasting site, a fact backed up by Respondent’s trademark application for MAINSTREAM TV, which has been approved.
Respondent argues its legitimate interest is not diminished because the <stream.biz> web site is not yet activated, a problem resulting from the fact that the Disputed Domain is on hold.
Respondent contends its burden to establish legitimate interest is very small..
Respondent contends it has engaged in substantial efforts and expense to develop its Internet television broadcasting site, even applying for a trademark.
Respondent alleges that STREAM is a common word in the dictionary meaning, among other things, “a steady succession” or “continuously moving procession.”
Respondent argues it registered the Disputed Domain because it is short for the common term “streaming” which, in the context of the Internet, refers to streaming media. Streaming media refers to audio, video and other multimedia, which can be downloaded and viewed by a user in real time. This term is, thus, appropriate for Respondent’s Internet television broadcasting site.
Respondent adds that the common word STREAM is subject to substantial third party use unaffiliated with Complainant. A search on the Internet search engine Google.com for the word STREAM without the word “international” (to exclude references to Complainant, Stream International) yielded 2,180,000 web pages unaffiliated with Complainant. There are over one thousand pending and active trademark registrations which incorporate STREAM that are unaffiliated with Complainant. There are over 2,000 third-party Internet domain names containing the common word STREAM.
Respondent’s Registration of the Domain Name in Bad Faith
Respondent contends there is no evidence that the Disputed Domain was registered with the intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers.
Respondent contends it is well-established under the UDRP Policy that, where a trademark is a common term, as it is here, 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.”
Respondent contends the wide third party use of the word STREAM establishes that the value of the Disputed Domain derives not from any alleged fame of Complainant’s mark but, rather, from the popularity of this common word.
Respondent alleges that it certainly never contacted Complainant to offer to sell it the Disputed Domain, and Complainant did not so much as call Respondent to inquire what its plans were for the domain name, or whether it would consider selling it.
Respondent adds that Complainant has not established that Respondent had ever heard of it when the Disputed Domain was registered and that without such knowledge, it is not possible for the Disputed Domain to have been registered in bad faith.
Reverse Domain Name Hijacking
Respondent contends that since STREAM is a generic mark, there was no basis to bring this Complaint over a very common word.
Respondent contends Complainant misrepresented the status of its alleged trademark, stating that application number 74,662504 “has been approved for registration,” when in fact the true status since March 15, 2002 (in existence at the time the Complaint was filed) was that the application “was removed from that status.”
Respondent contends Complainant should be rebuked for misrepresenting the status of its alleged trademark.
Having reviewed the Complaint and evidence submitted by the parties, the Panel makes the following findings:
· The disputed domain name <stream.biz> is identical to Complainant’s trademark STREAM.
· Complainant has not satisfied its burden to prove that it has exclusive rights in the trademark STREAM.
· Complainant has not satisfied its burden to prove that Respondent has no rights or legitimate interests in the domain name <stream.biz>.
· Complainant has not satisfied its burden to prove that Respondent has registered the domain name <stream.biz> in bad faith.
· Respondent has not satisfied its burden to prove that the Complaint constituted an abuse of the process so as to constitute Reverse Domain Name Hijacking.
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 may 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.
(i) Complainant’s Rights in the Mark
On this first issue, the Panel finds that Complainant has not satisfied its burden in showing that it has (exclusive) rights in the mark STREAM given the fact that it has not made satisfactory proof to the existence of its rights other than merely alleging that it has been using the mark since 1995.
Complainant has filed three applications with the United States Patent and Trademark Office (“USPTO”) for the STREAM mark (exhibit A), and has alleged that its application (No. 74,662504) had been approved for registration. However, Respondent has shown that while the application was scheduled to register, it had been withdrawn from that status; This is supported by the exhibit 6 of the Response. While this evidence is not persuasive as to the exact status of this application, Complainant should have attempted to clarify that issue. In any event, as seen in Business Architecture Group, Inc. v. Reflex Publishing, Case No. 97051 (Nat. Arb. Forum June 5, 2001), the Panel found that complainant had no enforceable trademark rights because “[t]he PTO has not yet approved the application, therefore no registered trademark has been registered via registration”. The Panel also cites the decision Warnervision Entm’t Inc. v. Empire of Carolina Inc., 919 F. Supp. 717 (S.D.N.Y. 1996) (trademark rights do not accrue to a pending application).
(ii) Respondent’s Rights or Legitimate Interests
On this second issue, the Panel finds that Complainant has not satisfied its burden in showing that Respondent does not have rights or legitimate interests in the mark STREAM given that there was no attempt to show evidence on this issue, other than a mere allegation. Complainant simply contends that Respondent has made no effort to carry out any of the actions that the Panel may consider as having acquired a legitimate interest in the domain name at issue. Complainant says to have based itself on a search of numerous databases and Internet search engines to assert that there is no evidence that Respondent has been commonly known by the name STREAM and that there is no evidence that Respondent has undertaken any efforts to conduct business under the <stream.biz> domain name or the STREAM mark. This simple allegation does not suffice. There is no evidence whatsoever of Complainant’s contention.
In addition, Complainant also states that a search of the United States Patent and Trademark Office records reveals that the Respondent has not applied to register the STREAM mark in connection with any goods or services. Even if that was the case, the absence of an application is not per say evidence of lack of right or legitimate interest as trademark rights are acquired through use and not by a simple application.
The initial burden of proof relies squarely on the shoulders of Complainant to show that Respondent has no rights or legitimate interest in respect of the domain name. Once Complainant has at least demonstrated enough indication, then, but only then does the burden shift to Respondent’s shoulders to rebut or explain. Otherwise, as in the present case, Respondent needs not to bring forward some evidence that neutralizes Complainant’s contentions.
Complainant having not proved with concrete evidence Respondent’s lack of rights or legitimate interest in the domain name, Respondent is in no obligation to convince the Panel of its rights.
Even if the burden of proof in this case needs not to be shifted to Respondent, Respondent nevertheless has presented some elements to show it has rights or legitimate interests in the disputed domain name. Prior to the initiation of this dispute, Respondent has operated with its affiliated company, Boogie TV LLC, <Boogie.tv> and <iBoogie.com>, a search engine web and site network in which it has invested $1.7 million. Respondent has indicated it intends to use the Disputed Domain for an Internet based television broadcasting site, a fact backed up by Respondent’s trademark application for MAINSTREAM TV. This trademark has been filed in connection with the Internet based television broadcasting business. This is supported by evidence annexed to the additional response at exhibits 1 and 2. Because the Disputed Domain is demonstrably being prepared to be used in connection with the bona fide offering of services, Respondent’s legitimate interest is certainly prima facie established.
(iii) Registration or Use in Bad Faith
Having found in favor of Respondent on the previous count, this element does not necessarily need to be examined. However, in the case at hand, the Panel does find that there was no bad faith on the part of Respondent since Complainant did not even attempt to present some evidence that would enable a conclusion of bad faith on the part of Respondent whether in the registration or use of the domain name in dispute.
(iv) Reverse Domain Name Hijacking
Respondent has asked for a declaration by the Panel that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
A claim of Reverse Domain Name Hijacking by Complainant must meet a heavy burden of proof by Respondent, i.e. there must be some evidence at least that the Complaint or the process was brought in bad faith or constituted an abuse of the process. See Teranet Land Info. Serv. Inc. v. Verio, Inc., D2000-1123 (WIPO Jan. 25, 2001) and Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2002) noting that a finding of reverse domain name hijacking requires bad faith on Complainant’s part; bad faith was not proven in these decisions because Complainant did not know and should not have known that one of the three elements in the Policy 4(a) was absent. In the case at hand, while Respondent has shown that the acceptance status had been withdrawn, it did not go as far as proving that the application as such had been abandoned. While Complainant might have been somewhat careless in not verifying the exact status of its application in making the application, that is not necessarily proof of bad faith on his part as such records are by their nature public records. The Panel refers to its finding in Prudential Assurance Co. v. Davis, FA 112447 (Nat. Arb. Forum July 8, 2002), in which it adopted the finding of Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) where “the Panel considered the Complaint to have been misconceived rather than brought in bad faith.”
For the foregoing reasons, the Panel concludes that :
– While the domain name registered by the Respondent is identical to the trademark, Complainant has not satisfactorily met its burden to prove that it owned exclusive rights;
– The Complainant has failed to show that Respondent has no rights or legitimate interests in respect of the domain name; and
– The Complainant has failed to show that the domain name has been registered or used by the Respondent in bad faith.
The Complainant having failed to meet its burden on the three elements, which need to be proven cumulatively under the STOP Policy, accordingly, the Paneldismisses the Complaint.
There are no further IP claims pending against this domain name under the STOP Policy.
Jacques A. Léger, Q.C., Panelist
Dated: July 12, 2002