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Generic Top Level Domain Name (gTLD) Decisions |
New Cargo Furniture, Inc. v. BDG
Marketing
Claim Number: FA0206000114606
PARTIES
Complainant
is New Cargo Furniture, Inc., Fort
Worth, TX, USA (“Complainant”) represented by Pamela S Ratliff, of Baker
Botts LLP. Respondent is BDG Marketing, Ubud, Bali, INDONESIA
(“Respondent”).
The
domain name at issue is <cargo.biz>,
registered with Easy Space LTD.
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.
Anne
M. Wallace, Q.C., as Panelist.
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 June 14, 2002; the Forum
received a hard copy of the Complaint on
June 13, 2002.
On
June 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 9,
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 July 5, 2002.
Complainant
submitted an Additional submission on July 10, 2002. This submission was
received in a timely manner and has been considered
by the Panel.
On July 22, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Anne M. Wallace, Q.C., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
owns a number of United States and Mexico trademark registrations for CARGO for
furniture and retail furniture stores.
Complainant is a manufacturer and
retailer of high-quality furniture. Complainant has advertised and promoted its
goods and services
throughout the United States under its CARGO family of
trademarks for at least twenty years.
Complainant
asserts that the domain name <cargo.biz>
is identical to its CARGO trademark, and that Complainant’s use of the CARGO
trademarks long predates any use or registration of
the domain name by
Respondent.
Complainant
further asserts Respondent should be considered to have no rights or legitimate
interests in the domain name because Respondent
is not a licensee of
Complainant and has not received any permission or consent to use the CARGO
trademark. Complainant asserts that
Respondent is not named CARGO, owns no
trademarks or service marks incorporating CARGO and has never done business
under the name
CARGO. Complainant asserts that Respondent is not offering goods
or services under this name and is not commonly known as CARGO.
In
light of my findings below, I need not deal with Complainant’s arguments in
relation to bad faith.
B.
Respondent
Respondent
is the marketing division of Bali Direct Group of Companies. The group is made
up of several different businesses that
provide different services and/or trade
in different products including arts and handcrafts, jewelry, fashions and
accessories, furniture
and home accessories. The main services provided by
Respondent are freight forwarding, buying and product sourcing, marketing and
Internet related services. More new companies have recently been formed within
the group, and Respondent has registered several domain
names that will be
used, in the form of web sites, to promote the goods and services of the
companies.
In
early 2001, Respondent formed the business, Cargo.biz. The intended and only
place of business of Cargo.biz will be online on the
Internet. The company will
provide and facilitate the provision of commercial transportation services and
products. Respondent submitted
evidence of the Cargo.biz logo that has been
developed, as well as a mock-up of the intended Cargo.biz homepage. Respondent
has not
developed the site further because of this STOP proceeding.
Respondent
asserts that it has the right, just like any other entity, to use a generic
word such as CARGO in its business. Complainant
may have trademark rights in
respect of furniture and retail furniture sales, but does not have all rights
over the word CARGO. Respondent
submitted evidence, for example, that there are
some 298 “live” registered or pending trademark applications in the United
States
Patent and Trademark Office in which registrations the word CARGO
appears.
Respondent
disputes that its domain name is identical to or confusingly similar to
Complainant’s mark because Respondent’s name is
not merely CARGO, but
CARGO.BIZ, in Respondent’s case, the .BIZ portion of the company name being an
integral part of the name and
signifying that the business is an Internet
business.
Respondent
asserts that it has a legitimate interest in the domain name. Respondent
applied to register <cargo.biz>
on September 8, 2001, to use in connection with its newly formed business
Cargo.biz. The business will operate a web site to facilitate
the provision of
commercial transportation services and products, services and products that are
in no way similar to Complainant’s
service or products. Respondent submits that
the creation of the name Cargo.biz, the application for the domain name
registration,
the development of the trademark for Cargo.biz, and the
development of the home page lay-out for the business all illustrate
demonstrable
preparations to use the domain name in connection with a bona fide
offering of goods and services. These preparations pre-date notice
of
Complainant’s claim to the domain name which Respondent learned of only when it
received notice of Complainant’s IP Notice under
the STOP Policy. Respondent has gone no further with the development of
the business because of this proceeding.
In
light of my findings below, I need not deal with Respondent’s submissions with
respect to the allegations of bad faith.
C.
Additional Submissions
Complainant’s
Additional Submission does not add appreciably to the arguments. Complainant
points out that Respondent has acknowledged
that the domain name is identical
to Complainant’s CARGO trademark.
Complainant
further asserts that all Respondent has done is add the .biz extension to Complainant’s
CARGO trademark. This does not
demonstrate a right or legitimate interest nor
create a new distinguishable mark. Complainant asserts that the word CARGO is
not
generic, as evidenced by its trademark registrations for CARGO.
Complainant
asserts that Respondent has failed to demonstrate that its use of <cargo.biz> will not create a
likelihood of consumer confusion. Respondent states that Cargo.biz is a
recently formed company and its intended
and only place of business will be
online on the Internet and the plan is to fully develop and launch a web site
that will be used
to provide and facilitate the provision of commercial
transportation services and products. Based on the goods and services provided
by the BDG group of companies, it is likely that furniture provided by the
companies will be transported using the Cargo.biz services.
Additionally,
Complainant submits that Respondent’s business plan may change in the future to
include the sale of furniture under
the Cargo.biz mark.
With the exception of the .biz extension,
the disputed domain name <cargo.biz>
is identical to Complainant’s CARGO trademark. Respondent, however, has rights
and legitimate interests in the domain name.
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
evidence, through proof of registered CARGO trademarks, establishes
Complainant’s rights in the CARGO mark.
The
domain name is <cargo.biz>.
The trademark is CARGO. Within the meaning of the STOP Policy, the domain name
is identical to a trademark in which Complainant
has rights.
Respondent’s
evidence establishes rights or legitimate interests in the domain name within
the meaning of the STOP Policy.
Upon
learning of the creation of the .biz extension, Respondent made preparations to
register and use <cargo.biz>
in connection with an Internet based business it created called Cargo.biz.
Before any notice of a dispute with Complainant, Respondent
filed the
registration application for Cargo.biz, developed the company logo and began
work on the web site content. The <cargo.biz>
domain name is intended to be used in connection with the bona fide business of
transportation services and products. Respondent
was candid in admitting that
the Bali Direct Group of Companies does engage in the furniture business, but
there is no suggestion
whatsoever in the evidence that <cargo.biz> will be used for any business other than
transportation services. Were that to change in the future, then Complainant
may have a
legitimate complaint against Respondent for trademark infringement.
At this time, however, there is no evidence of infringement.
Respondent
has made demonstrable preparations to use the domain name in connection with a
bona fide offering of goods and services,
and began those preparations before
notice of the dispute. Respondent, therefore, has rights to and legitimate
interests in the domain
name within the meaning of STOP Policy 4(c)(ii).
In light of my findings with respect to
rights and legitimate interests, I need not deal with the question of bad faith.
DECISION
The Complaint is hereby dismissed,
and the Panel hereby determines that subsequent challenges to this domain name,
as against the Respondent under the STOP Policy
shall not be permitted
against this domain name,.
Anne M. Wallace, Q.C., Panelist
Dated: July 31, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1348.html