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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aware, Inc. v. Cambridge
Case No. DBIZ2002-00014
1. The Parties
The Complainant is Aware, Inc., a corporation organized in the State of Massachusetts, United States of America (USA), with place of business in Bedford, Massachusetts, USA.
The Respondent is Cambridge, with an address in Miami, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name is <aware.biz>.
The registrar of the disputed domain name is NeuLevel, Inc. with business address in Sterling, Virginia, USA.
3. Procedural History
(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP Policy") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center ("the Center") on April 18, 2002, and received in hardcopy on April 22, 2002. Following notice from the Center of a technical filing deficiency, Complainant submitted an amended complaint received by the Center on May 13, 2002. The Center then verified that the complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
(b) On May 16, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was June 5, 2002.
(c) On June 10, 2002, the Center transmitted by e-mail notification to Respondent of its default in responding to the complaint.
(d) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on June 28, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment.
(e) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a valid registration for the word trademark "AWARE" on the Principal Register at the United States Patent and Trademark Office (USPTO), Reg. No. 2,119,256, dated December 9, 1997, in international class 9, covering "computer hardware" as further specified.
NeuLevel WHOIS Database information prepared by the Center shows that Respondent, Cambridge, with e-mail address at <email@example.com>, is registrant of the disputed domain name. The physical address and telephone number for "Cambridge" listed on its NeuLevel registration are the same as that of "DomainCollection Inc." as shown on the <DomainCollection.com> website (Complaint, Annexes 1 & 5).
DomainCollection.com has offered the dispute domain name <aware.biz> for sale to the public on its commercial website located at Internet address (URL) <www.domaincollection.com>. Persons interested in purchasing the disputed domain name are invited to request a price quote. DomainCollection.com offers a substantial number of domain names for sale. The home page of DomainCollection.com indicates "Thousands of Premium Domains available, including .US .BIZ and .INFO names!" The home page also includes the following notice:
"Our Policy: It is the policy of domaincollection.com to respect the legal rights of others. We regret that the volume of domains available through Domaincollection makes it infeasible for us to investigate whether any particular domain offered for sale resembles a registered trademark or service mark. We advise buyers to conduct such investigations as may be appropriate in their circumstances.
DomainCollection strives to obey all applicable laws regarding the registration and use of domain names. We also adhere to the policies established by ICANN for domain name registrations."
The .biz Registration Agreement incorporates the STOP Policy and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, NeuLevel, Inc., Respondent accepted the .biz Registration Agreement. In doing so, Respondent consented to be bound by the STOP Policy and STOP Rules. The STOP Policy and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which the Center is one. This Panel is appointed by the Center to decide the complaint under the STOP Policy pursuant to the STOP Rules.
5. Parties’ Contentions
Complainant states that it is the holder of rights in the trademark "AWARE" as evidenced by its registration at the USPTO, and that it uses this mark to identify its products in commerce.
Complainant indicates that the announced purpose of the .biz domain "was to provide a domain for commercial and business purposes only".
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name since the name was not registered for its own use in connection with a business.
Complainant argues that Respondent registered and has used the disputed domain name in bad faith by offering it for sale on its website for valuable consideration, and that "Respondent has demonstrated a clear pattern of registering domain names solely for the purpose of selling, renting or otherwise transferring the domain name registrations without intending to use the domains itself".
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The STOP Policy is a set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz gTLD, regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP Policy is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes. However, the STOP Policy differs from the UDRP in certain material respects regarding comparison of the mark and the domain name, the enumerated criteria for establishing rights or legitimate interests, the enumerated elements necessary to demonstrate bad faith and in the types of remedy available. The Panel will make findings under the STOP Policy necessary to render a determination in this dispute.
In order to establish the right to transfer of a name from a respondent, a complainant under the STOP Policy must demonstrate pursuant to paragraph 4(a):
(i) The disputed 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 disputed domain name has been registered or is being used in bad faith.
The complainant must prove that each of these three elements is present.
The Center transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully, and there is no indication in the file that the courier mailing was not successfully delivered. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
Complainant has submitted evidence of its rights in the word trademark "AWARE", including registration on the Principal Register at the USPTO (see Factual Background, supra). Respondent has not challenged the presumption of Complainant’s rights in the mark based on registration. The Panel determines that Complainant has rights in the trademark "AWARE" and that the disputed domain name and the "AWARE" mark are identical within the meaning of the STOP Policy.
The STOP Policy listing of elements that will establish rights or legitimate interests in a disputed domain name, though not exhaustive, is different than the listing of the UDRP. Paragraph 4(c) of the STOP Policy provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests for purposes of paragraph 4(a)(ii)":
i. Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights.
Paragraph 4(c) of the STOP Policy does not enumerate the legitimate noncommercial or fair use element of paragraph 4(c)(iii) of the UDRP. On the other hand, the STOP Policy adds an element that the respondent may demonstrate that it owns a trade or service mark that is identical to the domain name.
A .biz domain name as to which an IP Claim has been filed under the NeuLevel start-up distribution procedure is placed on hold to allow the initiation of an administrative proceeding challenge, as has been initiated by Complainant here. The use of a .biz domain name in connection with an active website is effectively precluded pending the resolution of a STOP Policy challenge (see STOP Policy paras. 3 & 7 regarding maintenance of status quo pending resolution of start-up claims). This has not prevented Respondent from offering the disputed domain name for sale to the public on its commercial website, although Respondent would not be able to transfer the name to a third party unless this proceeding were resolved in its favor (see STOP Policy, para. 3).
Respondent has not asserted any rights or legitimate interests in the disputed domain name. There is no reason to suggest that Respondent might have a trademark right in the name, or have been commonly known by the name.
The Panel does not consider that offering the disputed domain name for sale in the context of this proceeding constitutes a bona fide offering of goods or services in the sense of paragraph 4(c)(ii), STOP Policy.
Moreover, Respondent completed its registration of the disputed domain name following notice from the registrar of Complainant’s trademark claim (IP Claim) pursuant to the NeuLevel .biz start-up procedure. Such notice does not invariably equate with "notice of a dispute" in the sense of paragraph 4(c)(ii), STOP Policy. There is, however, no evidence before the Panel to rebut a presumption of such notice here. In the circumstances of this proceeding, Respondent had "notice of a dispute" prior to offering the disputed domain name for sale.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The STOP Policy includes a non-exhaustive list of circumstances that will demonstrate bad faith registration or use of a disputed domain name:
"(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 [its] 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 [its] 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 [its] web site or location or of a product or service on your web site or location." (para. 4(b), STOP Policy)
Respondent has offered the disputed domain name for sale to the public. As Respondent is in the business of purchasing and reselling domain names, it is reasonable to assume that it expects on completing a sale to receive valuable consideration in excess of its documented out-of-pocket costs directly related to the name.
Respondent is not offering the disputed domain name for sale specifically to Complainant or a competitor. "Aware" is a common descriptive term in the English language used, inter alia, to refer to a state of consciousness or perception, and it may be assumed that there are potential uses of the word as a domain name that would not interfere with Complainant’s rights in its mark (for example, in another line of commerce). It is reasonable to assume that a person other than Complainant or a competitor might purchase the disputed domain name and use it without disturbing Complainant’s rights in its mark.
The purchase and resale of domain names is a legitimate business, and participating in that business does not evidence bad faith. The issue in this case is whether Respondent evidences bad faith by registering and offering to resell a domain name that directly incorporates Complainant’s mark, when Respondent has been advised of Complainant’s trademark claim in advance of registration, and when Complainant’s mark theoretically might be purchased and used by third parties without infringing Complainant’s rights. Respondent is essentially creating an auction in which Complainant must bid against others for use of its mark in a domain name, when there might be other good faith bidders. The Panel determines that Respondent’s conduct constitutes bad faith registration and use of the disputed domain name because Respondent (a) has prevented Complainant and any other business with a good faith interest in using the name from registering it, and (b) has placed Complainant and third parties in the position of paying more to purchase the domain name than if they were able to acquire it directly from an accredited registrar, without adding any value for Complainant or any prospective third party purchaser.
Complainant has demonstrated that Respondent registered the disputed domain name that is identical to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed name, and that Respondent has acted in bad faith, all within the meaning of paragraph 4(a) of the STOP Policy.
The Panel determines that Complainant, Aware, Inc., has met the burden of proving that Respondent, Cambridge, has registered the disputed domain name, <aware.biz>, identical to a trademark in which Complainant has rights, that Respondent has not established rights or legitimate interests in that domain name, and that Respondent registered the disputed domain name in bad faith, all within the meaning of paragraph 4(a) of the Stop Policy. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott
Dated: July 12, 2002