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Sales-Outlets.com v. Marco Publishing Corporation [2002] GENDND 1177 (16 July 2002)


National Arbitration Forum

START-UP TRADEMARK OPPOSITION POLICY

DECISION

Sales-Outlets.com v. Marco Publishing Corporation

Claim Number: FA0204000112524

PARTIES

Complainant is Sales-Outlets.com, Chicago, IL (“Complainant”) represented by Craig Entwistle.  Respondent is Marco Publishing Corporation, Houston, TX (“Respondent”) represented by Stephen H Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gifts.biz>, registered with Bondi LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Min S. Xu, Esquire 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 16, 2002.

On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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”).

On June 10, 2002, Respondent requested, without Complainant’s consent, an extension of time in which to file its Response.  The Forum granted Respondent’s request on June 12, 2002, and extended the Response deadline to July 1, 2002.

An untimely Response was received and determined to be complete on July 2, 2002.

On July 12, 2002, pursuant to STOP Rule 6(b), the Forum appointed Min S. Xu as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns U.S. federal trademark applications for its trademark “GIFTS.BIZ” for use in connection with “on-line ordering services featuring general merchandise via a global computer network: Providing on-line electronic information about the goods and services of others via a global computer network.  Complainant also contends that it uses the mark in connection with the goods and service for the on-line ordering services featuring general merchandise via a global computer network: providing on-line electronic information about the goods and services of others via a global computer network.  Further, Complainant contends that the domain name <gifts.biz> is identical to the trademark in the trademark application.  Furthermore, Complainant contends that the Respondent does not have rights in the trademark.  Moreover, Complainant contends that the Respondent has registered the domain name in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of pocket costs directly related to the domain name.

B. Respondent

Respondent contends that the Complainant has not provided any proof of trademark rights of the trademark that is identical to the domain name.  Respondent also contends that the Complainant has failed to provide the proof that the Respondent has no legitimate interest in the domain name.  Further Respondent contends that the Complainant has failed to prove the element of bad faith.

FINDINGS

It is the Panel’s finding that the Complainant has not proved that the Complainant has acquired rights of the trademark or service mark that is identical to the domain name; that the Complainant has not proved that the Respondent has no rights or legitimate interests in respect of the domain name; and that the Complainant has not proved that the domain name has been registered or is being used in bad faith.

Also, it is the Panel’s finding that the Respondent has not proved that it has rights or legitimate interests in respect of the domain name, and therefore subsequent challenges under the STOP Policy against this domain name shall be permitted.

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

Under the STOP Policy, the burden of proof of rights in the mark is on the Complainant.

Complainant filed a U.S. federal trademark applications for its trademark “GIFTS.BIZ” for use in connection with on-line ordering services featuring general merchandise via a global computer network; providing on-line electronic information about the goods and services of others via global computer network.  The trademark application for “GIFTS.BIZ” (Serial Numbers 78/124,579) was filed on April 27, 2002 and has not yet obtained a registered trademark.  The trademark application is pending in the U.S. Patent & Trademark Office subject to examination that is required before an application is approved for registration.  Further, this application is an Intent-to-Use application, and it was filed on the same day as this Complaint was filed.  There is no evidence of use provided by the Complainant.  Therefore, the Complainant has not demonstrated that it acquired common law trademark rights.

Accordingly, this Panel finds that the Complainant has not yet established protectable rights in its “GIFTS.BIZ” mark and thus fails to meet the burden of proof.

Respondent’s Rights or Legitimate Interests

Under the STOP Policy, if Complainant does not have rights in the mark, the Complaint is dismissed, and the Panel must also determine whether Respondent has rights or legitimate interests in the disputed domain name so as to determine that subsequent challenges under the STOP Policy against this domain name shall be permitted.  Such burden of proof is on the Respondent.

No evidence has shown that Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name.  The Respondent has not proved that the Respondent has rights or legitimate interests in respect of the domain name.  There is no proof that the Respondent has obtained any registered trademark for the domain name or any trademark rights under the common laws.  The Respondent’s business is a publishing company and has not been commonly known by the domain name.  The Respondent’s mere statement that it publishes newsletters on various topics including the topic GIFTS is not sufficient to establish rights or legitimate interests in the disputed domain name.  See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (“The Respondent’s unsupported, self-serving allegations alone are insufficient to establish that the Respondent has rights to legitimate interests in respect to the domain name at issue”).

Therefore, this Panel finds that subsequent challenges under the STOP Policy against this domain name shall be permitted.

Registration or Use in Bad Faith

Under the STOP Policy, the burden of proof of Respondent’s registration or use in bad faith is on the Complainant.

In this case, the Complainant submitted three exhibits that reported that the Respondent obtained 17 or 93 domain names.  However, the Complainant has not provided evidence to demonstrate that the domain name has been registered or is being used in bad faith.  Also, the authenticity of the exhibits is not clear.  There is no evidence, but mere allegation, from the Complainant that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.  The Respondent responded in its Response that the Respondent is a publishing company that publishes newsletters on various topics including the topic of GIFTS.  There is no further rebuttal evidence from the Complainant.

This Panel finds no sufficient evidence of bad faith on the part of the Respondent.

DECISION

It is the decision of this Panel that the domain name in dispute, <gifts.biz>, be retained with Respondent, that the Complaint is dismissed, and that subsequent challenges under the STOP Policy against this domain name shall be permitted.

Min S. Xu, Esq., Panelist

Dated: July 16, 2002


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