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Carol Shedrick d/b/a Stanford Limousine LLC v. Charles Princeton d/b/a Net Solutions [2004] GENDND 530 (2 April 2004)


National Arbitration Forum

DECISION

Carol Shedrick d/b/a Stanford Limousine LLC v. Charles Princeton d/b/a Net Solutions

Claim Number: FA0402000236575

PARTIES

Complainant is Carol Shedrick d/b/a Stanford Limousine LLC (“Complainant”), 825 San Antonio Rd. #101, Palo Alto, CA 94303. Respondent is Charles Princeton d/b/a Net Solutions (“Respondent”), represented by Arlo Hale Smith, 66 San Fernando Way, San Francisco, CA 94127.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stanfordlimo.com>, registered with Go Daddy Software, Inc.

PANEL

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

Jacques A. Léger, Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 9, 2004; the Forum received a hard copy of the Complaint on February 11, 2004.

On February 11, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <stanfordlimo.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@stanfordlimo.com by e-mail.

A timely hard copy of the Response was received on March 10, 2004. However, the electronic copy of the Response required by UDRP Rule 5(a) and (b) was not received in a timely fashion, and is thus not in compliance with the Rules. For reasons explained below, the Panel chose to accept the Response.

On March 19, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger, Q.C. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Rights in the Mark/ Identical or Confusingly Similar

Stanford Limousine, LLC is an authorized carrier, having made written application to the Public Utilities Commission (“PUC”) of the State of California for a permit to operate as a CHARTER PARTY CARRIER OF PASSENGERS.

Stanford Limousine, LLC was registered as a Limited Liability Corporation on July 21, 2000 and a fictitious business name statement for “Stanford Limousine” was filed with the County of Santa Clara California on October 27, 1999. The domain name <stanfordlimousine.com> was created and registered on December 8, 1999 to be the company’s web site and Internet destination for Stanford Limousine, LLC’s customers.

On March 26, 2002, Mr. Charles Princeton d/b/a Net Solutions registered the domain name <stanfordlimo.com> on behalf of one of his customers in the limousine business and operating in the same geographical area. Since “limo” is short for “limousine”, <stanfordlimo.com> is then confused as being the official web site for Stanford Limousine, LLC since they offer the same services.

Rights and Legitimate Interests

Respondent operates a limousine company out of the San Francisco Bay Area named “San Francisco Limo” for which it owns the domain name <sanfranciscolimo.com>. Customers landing at the <stanfordlimo.com> web site are misled into thinking that Stanford Limousine, LLC is affiliated with San Francisco Limo.

Respondent is not a California registered corporation, nor has it applied for a fictitious business name.  Respondent has never operated or existed or done business under “Stanford Limo”, nor does it have a license from the PUC of the State of California to operate as a CHARTER PARTY CARRIER OF PASSENGERS under the name “Stanford Limo”.

Bad Faith

By using the domain name <stanfordlimo.com>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Stanford Limousine, LLC’s mark as to the affiliation of Respondent’s web site. In StanfordLimo.com’s “About Us” page, Respondent ostentatiously lies by pretending to be a legitimate company and being a member of the “National Limousine Association”, which it is not since the entity “Stanford Limo” does not exist.

B. Respondent

Respondent has been operating a transportation business as Airport Commuter Limousine and Sedan Service, Inc. since 1986.

Respondent has registered this Stanford Limo as one of its fictitious business names and has notified the California PUC that Airport Commuter Limousine and Sedan Service, Inc. does business under said the name “Stanford Limo”.

Complainant has no protectable interest in “Stanford Limousine”. It is clear that the word “limousine” or “limo” is in common use and is “regarded by law as common property”. More fundamentally, “limousine” or “limo” is “descriptive of goods or services” and therefore cannot become protected for use by any one party.  “Stanford” is, likewise, a name in very common use. Moreover, “Stanford” is a geographical term – referring to the geographical area near the Campus of Leland Stanford, Jr. University.  Respondent’s business operates in that geographical area, giving him equal rights with Complainant to use the same name.

DISCUSSION & FINDINGS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Preliminary Procedural Issue: Deficient Response

The Panel was informed that the hard copy of the Response was received in a timely fashion but that the electronic copy was not.

As decided in Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000), any weight to be given to the lateness of the Response is solely in the discretion of the Panel.

The Panel finds that Respondent failed to timely submit a Response to the Forum.  Therefore, stricto sensu, Respondent did not comply with ICANN Rule ¶ 5, which reads as follows:

           

            The Response

(a)      Within twenty (20) days of the date of commencement of the administrative proceeding Respondent shall submit a response to the Provider.

(b)      The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form …”

While the Panel is under no obligation to accept the deficient Response, the Panel nevertheless accepts it as it has been sent, subject of course to its substantive value.  See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002), wherein it was ruled that declaring a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.

Although Respondent provided no explanation with regards to its failure to timely send an electronic copy of its Response, Panel notes that Complainant suffered no damage from this procedural deficiency. This, under normal circumstances, would be regarded as unacceptable and unjustified, however, given the insignificant impact it has on the proceedings and that this is an arbitration, which by definition should remain open and flexible, the Panel allows Respondent to make its case before this Panel.

Generalities

It is trite law that the UDRP Policy and Rules are intended to allow dispute resolution of those cases that fall squarely within the scope of such Rules, that is those trademark owners that have been targeted with the growing popularity of the Internet.

As it was stated in The Management of Internet Names and Addresses: Intellectual Property Issues, the Final Report of the WIPO Internet Domain Name Process, dated April 30, 1999, at paragraph 169, "It is recommended that the scope of the administrative procedure be limited to the abusive registration of domain names . . . ." See also Summit Indus., Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001) wherein it was stated that the UDRP is designed to deal with simple cases of cybersquatting.

The prerequisite is therefore that Complainant is the owner of trademark rights, whether registered or not. In as much as a trademark distinguishes wares and services, a trade name serves to distinguish the business of a trader and need not have the same attribute of distinctiveness.

While conceptually, nothing prevents a trade name from also being (or becoming) a trademark, in the absence of evidence of that, it cannot be construed as such. And it cannot be said that a trade name offers, at law, the same advantages as trademarks for UDRP proceedings.

Identical and/or Confusingly Similar

Complainant asserts it was incorporated in July 2000, under the name “Stanford Limousine, LLC.”  The Panel finds that the “Stanford Limousine, LLC” name may be viewed as Complainant’s trade name. However, as stated in Univ. of Konstanz v. uni-konstanz.com, D2001-0744 (WIPO Oct. 18, 2001), the UDRP Policy’s scope did not encompass trade names in its definition of “Mark” in which the Complainant has rights. See also Sintef v. Sintef.com, D2001-0507 (WIPO June 21, 2001) wherein it was found that “trade names as such are, however, not the subject of the current Policy”.

Nothing  would prevent “Stanford Limousine, LLC” as a trade name, from also being considered, under some  circumstances, as distinctive and thus being used by Complainant as  a  trade mark so as  to distinguish its services, if proper evidence was adduced to that effect, which was not done in the present case. As stated in Stadshypotek Bank AB v. Customer Service, D2003-0342 (WIPO June 19, 2003), “the Complainant can assert trademark rights when the Panel can conclude from the circumstances of the case and the evidence brought to its knowledge that the Complainant is the holder of a distinctive designation for a certain category of products and services.” The Panel relies on the findings in Music United.com AG v. Nauta, D2000-1019 (WIPO Nov. 7, 2000): “ No circumstances have been submitted in the case to suggest that the company name is actually also a trademark or service mark, even if it seems to have been used to identify Complainant’s activities and thus, at least partially, fulfils the functions of a trademark. Obviously, the company name had not at this point been registered as a trademark. There is not sufficient evidence available to the Panel to consider whether a trademark right may have been acquired through the use of the company name for the purpose of identifying Complainant’s goods or services.”

Moreover, Complainant’s website is located at <stanfordlimousine.com>, which was registered on December 8, 1999. Panel takes notice of the findings in the majority decision in Delta Air Transport NV (trading as SN Brussels Airlines) v. De Souza, D2003-0372 (WIPO Aug. 5, 2003) wherein it was stated that “The Respondent is using the Domain Names as unique identifiers and they are thus serving the purpose of trade marks…The Complainant has put its case at risk by not putting more evidence before the Panel. That is, by way of reliable evidence of actual use to establish unregistered trademark rights.” However, in the case at hand, Complainant has done very little, if any, in order to demonstrate or attempt to demonstrate any form of common law rights in “Stanford Limousine”. This illustrates that bare allegations alone cannot be considered as such, as they must be supported by “some” evidence. Under such circumstances, the Panel has little choice but to conclude, on a procedural ground, that the minimal burden has not been met on this element.

[JAL1] In addition, Respondent contends that Complainant has no enforceable rights in the STANFORD LIMOUSINE mark, as it is a common name, a geographical identifier, and [JAL2] a simple tradename. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) wherein it was held that simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in a mark); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) wherein it was stated that "geographic terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner . . .[t]o hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question". Various Administrative Panels also found that the addition of a geographic descriptor does not change the confusing nature of the similarity (e.g. Telstra Corp. Ltd. v. Ozurls, D2001-0046 (WIPO Mar. 27, 2000); Wal-Mart Stores, Inc. v. Lars Stork, D2000-0628 (WIPO Aug. 17, 2000) and Am. Online, Inc. v. Dolphin@Heart,D2000-0713 (WIPO Sept. 5, 2000)).

Given the above, the Panel concludes that Complainant has failed to establish any rights in the STANFORD LIMO mark pursuant to Policy paragraph 4(a)(i).

Hence, there is no use for the Panel to undertake the analysis of the prongs set forth under Policy paragraphs 4(a)(ii) and (iii).

The Panel wishes to point out however that this finding is made in the context of the very narrow scope of the UDRP procedure, where Complainant must absolutely meet a real burden imposed upon it with concrete evidence on each of the three elements, since the Panel is in no position to presume of any rights that could be alleged by either party. This decision is therefore made under reserve of Complainant’s ability to demonstrate its rights before another forum, i.e. a court of competent common law jurisdiction.

DECISION

Not having established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Jacques A. Léger, Q.C., Panelist
Dated: April 2, 2004


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