START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

Gerardus Ferdinand Forsthovel v. Nielsen a/k/a Jens Zacharias Nielsen

Claim Number: FA0206000114619

 

PARTIES

Complainant is Gerardus Ferdinand Forsthovel, Amsterdam, NETHERLANDS (“Complainant”).  Respondent is Nielsen a/k/a Jens Zacharias Nielsen, Koebenhaven V, DENMARK (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <login.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.

 

Houston Putnam Lowry, Chartered Arbitrator, 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 June 18, 2002; the Forum received a hard copy of the Complaint on June 17, 2002.

 

On July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 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 August 1, 2002.

 

On August 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Houston Putnam Lowry as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The domain name reflects the registered trademark of Complainant.  The letters LOGIN are an exact match of the registered Benelux trademark in which Complainant has rights.

 

Respondent has filed no Intellectual Property claims for the LOGIN mark.  Respondent has no registered trademark for Login.  Respondent's free email address at ING.AS indicates no real legitimate corporate concern.  Complainant has been using the Login trademark for online business since 1998.

 

Complainant has no indication Respondent registered or used the <login.biz> domain in bad faith.

 

B. Respondent

The word “login” must be considered a generic term, or else, must be considered too close to a generic term, to be significant for a single company or product (e.g. the name Coca-Cola, is significant for a company and it’s products, and is not a generic term).

 

A single company or person cannot have special rights for a generic term, as a company name or product name.

 

Respondent began starting 2-3 years ago a company for selling information for alternative medicine and environmental and ecological products.  As a name for this activity Respondent uses the name “login” (it symbolizes to login to better medicine and environment).  Respondent wants to make a web site for advertising for these products.  Respondent is still preparing the company and its activities.

 

Respondent registered the domain name in good faith.  The domain name was not registered 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 the Respondent’s out-of- pocket directly related to the domain name.

 

Respondent has not registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.

 

The parties are not competitors and the domain name was not registered by Respondent primarily to disrupt the Complainant’s business.

 

The domain name was not registered by Respondent in an international attempt to attract for commercial gain internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or product or service on Respondent’s web site.

 

FINDINGS

The Panel finds:

 

(1)   The domain name <login.biz> is identical to Complainant’s registered mark.

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

(3)   the domain name has NOT been registered or is being used in bad faith

 

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.  The “login” mark is identical to the <login.biz> domain name.

 

Complainant’s Rights in the Mark

Complainant registered the “login” mark on the Benelux trademark registry on February 13,1998.  The Panel will not, as seemingly suggested by the Respondent, review the propriety of the registration on the grounds it is a common word.  Complainant has used the mark in connection with an on-line business since 1998.

 

Respondent’s Rights or Legitimate Interests

Respondent has demonstrated no rights to the “login” mark.  Respondent has not claimed to be the owner or beneficiary of the “login” mark (in any jurisdiction).

 

Respondent claims he “begin starting” a company two or three years ago for selling information about alternative medicine and environmental and ecological products.  This company has not actually started business nor was any evidence provided that supported the assertion it has been preparing to commence business for such a long period of time.  The requirement under STOP Policy ¶4(c)(ii) is for demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.  The goods and services are not yet being offered and there was no evidence to support the assertion that preparations were underway.  “Beginning to prepare” is not sufficient under the STOP Policy and Respondent acquires no common law rights.

 

Respondent is not commonly known by the “login” moniker.  Respondent apparently does not does not engage in the sale of any goods, services or information, much less under the “login” mark.

 

Registration or Use in Bad Faith

 

There are a number of ways bad faith registration and/or use can be found.  Only one needs to be found for the Complainant to prevail.  According to the STOP Policy, the following is a non-exclusive list of ways to find bad faith:

                           i.                  Circumstances indicating that 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, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

                         ii.                  Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or

                        iii.                  Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

                       iv.                  By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

 

None of these factors are present here.  In fact, Respondent has specifically denied each and every one of these factors.  Complainant was candid in saying he has “no indications” of bad faith.  Complainant apparently did not even attempt to register the <login.biz> domain name (or neglected to inform the Panel of the fact).

 

There is a fundamental difference in a STOP proceeding, which was highlighted in Gene Logic Inc v. Bock, FA 103042 (Nat. Arb. Forum) http://www.arb-forum.com/domains/decisions/103042.htm.  Quoting that case, “As the Panel understands the STOP procedures, the ‘Notice of a .biz Intellectual Property Claim’ that the potential registrant receives in every .biz case, where there is a pre-filed IP Claim, is this unmistakable warning of the existence of a conflict over intellectual property rights:

 

‘According to our records you have applied for the above listed .BIZ domain name.  The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry.  In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied.  You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm.’”

 

However, this warning does not change the fact Complainant must prove this element to prevail.  The STOP notice cannot turn the bad faith requirement on its head by forcing Respondent to prove a negative.  Having provided literally no evidence, Complainant cannot prevail on this point.

 

 

DECISION

For the foregoing reasons, the domain name shall NOT be transferred.  There are no further challenges pending against this domain name under the STOP Policy.

 

 

 

Houston Putnam Lowry, Panelist and Chartered Arbitrator
Dated: August 13, 2002

 

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