WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brother Industries Ltd. v Donley
Case No. DBIZ2002-00069
1. The Parties
The Complainant is Brother Industries Limited, a corporation organized under the laws of Japan, having its principal place of business at 1-1-1, Kawagishi, Mizuho-ku, Nagoya 467-8562, Japan ("Complainant").
The Respondent is Roger Donley, a private individual domiciled in the United States, and residing at 1406 Richmond #231, Houston, Texas, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <brother.biz>.
The Registrar is Dotster.com, located at 11807 NE 99th St., Suite 1100, Vancouver, WA 98682, United States of America ("the Registrar").
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy for .biz (the "STOP"), the Rules for Start-up Trademark Opposition Policy for .biz (the "STOP Rules"), adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules").
The Complaint was received by e-mail by the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002. A hard copy of the Complaint was received by the Center on April 30, 2002.
On April 30, 2002, the Center sent an Acknowledgement of Receipt of Complaint to Complainant.
On May 2, 2002, the Center sent a Request for Registrar Verification to the Registrar. The Registrar emailed its reply to the Center on May 3, 2002.
On May 8, 2002, the Respondent emailed the Center. A further email from Respondent to the Center was received on May 23, 2002.
On May 28, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to Respondent, setting a deadline of June 17, 2002, for Respondent to submit a response to the Complaint.
On June 14, 2002, the Respondent emailed his response to the Center. A hard copy of the response was received by the Center on June 19, 2002.
On June 14, 2002, the Center sent an Acknowledgment of Receipt of Response to Respondent.
On June 28, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to parties, in which Wolter Wefers Bettink was appointed as Sole Panelist.
4. Factual Background
Complainant has filed an intellectual property claim ("IP Claim") pursuant to the instructions and the format provided by NeuLevel.
Complainant has registered the trademark BROTHER in various countries for goods and services in class 23 (personal computers, electronic typewriters, etc.). See e.g. US registration no. 1479366 dated. March 8, 1988, and no. 1034240 dated February 24, 1976.
On March 27, 2002, Respondent registered the domain name <brother.biz>.
After this registration, NeuLevel notified Complainant that Respondent had registered the domain name <brother.biz> and informed Complainant that it was entitled to commence a STOP proceeding against Respondent. On April 26, 2002, Complainant filed a STOP Complaint pursuant to the Start-up Trademark Opposition Policy.
5. Partiesí Contentions
Complainant has registered the trademark BROTHER in 118 countries. Complainantís trademark BROTHER and Complainantís products are well-known in the fields of facsimiles, printers, typewriters, word-processors, electronic labeling machines, sewing machines etc.
According to Complainant Respondent has no rights or legitimate interests in the domain name at issue and registered and used the domain name at issue in bad faith.
Respondent states that Complainant has failed to meet its burden of proof as required in article 4 (a) (ii) and (iii). According to Respondent, Complainant cannot and does not have the exclusive, world-wide right to use the word "Brother" in all contexts. Respondent intends to use the domain name at issue in connection with a bona fide offering of goods. Respondent is planning to use the domain name at issue for a web-store selling family-themed hats and clothing.
Respondent points out that "brother" is a generic term and that more than 600 domain names have been registered within the .com top-level with the component "brother".
Respondent contests that he has registered or is using the domain name at issue in bad faith.
Respondent requests a ruling of reverse domain name hijacking. According to Respondent Complainant has attempted to take the domain name at issue from him by making untenable claims and allegations which it knew at the time of filing of the STOP Complaint were clearly false.
6. Discussion and Findings
Under the STOP, a Complaint can only be filed by an "IP claimant" who had filed an IP claim for a particular alpha-numeric string. If that string becomes registered as a .biz domain name, NeuLevel notifies the IP claimant and invites it to initiate a STOP proceeding within 20 days. The Panel has been informed by the Center that this period has been extended to 25 days. The service provider (in this case the Center) is required to advise the Panelist if a disputed domain name is subject to more than one claim. In the present case, the Panel was advised that there is no other IP claim.
Under STOP, Complainant must show:
(a) that the domain name is identical to Complainantís trademark or service mark (Paragraph 4a(i));
(b) that Respondent has no rights or legitimate interests in the domain name (Paragraph 4a(ii));
(c) that the domain name was either registered or used in bad faith (Paragraph 4a(iii)).
The Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent to demonstrate rights or legitimate interests. Similarly, the instances of bad faith registration and use exemplified in the UDRP can be invoked by a Complainant. However, because STOP and STOP rules come into play shortly after registration of a domain name, and in view of the fact that it is sufficient that Complainant provides evidence of bad faith registration (and not also of bad faith use) of the domain name the focus of attention will be on bad faith at the time of registration.
(a) Trademark rights
Complainant has provided sufficient evidence of its rights to the domain name <brother.biz>. The pertinent part of the domain name < brother.biz> is identical to Complainantís trademark BROTHER. Respondent has not contested that the trademark BROTHER is well-known for typewriters, printers etc., as evidenced by the fact that it is registered for those goods in 118 countries.
(b) Legitimate interests
Complainant has stated that Respondent has no rights or legitimate interest in respect of the domain name <brother.biz>. However, Complainant has Ė apart from copying the examples under article 4 (c) of the Policy Ė failed to provide any meritorious argument or substantive evidence of this contention. Respondent has stated that he is intending to use the domain name at issue for the bona fide offering of family-themed hats and clothing. Complainant has not provided any documentation to support the contention that these plans do not constitute a bona fide offering of goods in the sense of article 4 (c) (i). Regardless of whether Respondentís plans constitute a right or legitimate interest in the domain name <brother.biz>, the Panel finds that Complainant has not established proof of either of the criteria of Paragraph 4 (c).
(c) Bad faith
As to bad faith, Complainant has presented no meritorious argument and submitted no evidence in support of its contention that Respondent has registered or used the domain name at issue in bad faith. Complainant has done no more than citing the four examples given under article 4 (b) of the STOP Policy. In the opinion of this Panel, the Complaint therefore does not contain the evidence of bad faith, required in article 4(b) of the STOP Policy.
For completenessí sake, the Panel has considered the circumstances set out below.
In Gene Logic Inc. v Cho Kyu Bock, FA103042 <genelogic.biz>, the Panel pointed out an essential difference between the factual and legal situation and the UDRP and the .biz STOP cases, namely the advanced IP Claim of the Complainant. As set out in this decision:
"Where such an IP Claim was filed, the registrar sends an email to any new applicant for the matching name specifically informing him or her that an existing IP Claim is on file and providing details as to the exact mark, the owner, and a description of the goods and services covered by the claimed mark, and complete contact information for the owner so that the .biz applicant could be under no illusions about the likelihood of a contest over the registration of the mark or who to contact if there were any question in his or her mind. If the .biz applicant nonetheless decides to go forward with the application, he or she has to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of the exact mark and the precise reasons there may be a conflict between the domain and the claimed mark."
However, as set out in that decision, the mere fact that Respondent, through Complainantís IP claim, was aware of Complainantís trademark rights Ė or, this Panel adds, the fact that Complainantís trademark is well-known - is in itself not sufficient to conclude that the registration of a domain name was done in bad faith. In addition to (actual or constructive) knowledge of the trademark at issue, the intent of the domain name registrant and the likely effect of his actions should also be taken into account (Gene Logic Inc. v Cho Kyu Bock, FA103042, p. 12). (In this respect, the Panel notes that Complainantís trademark BROTHER is a word found in any English dictionary and is, in the United States alone, registered as a trademark by at least four companies other than Complainant for a great variety of goods and services. This indicates (subject to counter evidence) neither that by registering the domain name Respondent intended to sell, rent or otherwise transfer the domain name to Complainant, to prevent Complainant from reflecting his trademark in a domain name or to attract users to his website by creating a likelihood of confusion with Complainantís mark as to source, sponsorship, affiliation or endorsement of his website, nor that this would be the likely effect of such registration. Since Complainant has not provided any evidence that Respondentís intent with the domain name at issue does indeed constitute bad faith in the sense of article 4(b) of the STOP Policy, the Panel concludes that in the circumstances of this case and in view of the evidence produced, the registration of the domain name <brother.biz> cannot be considered to be in bad faith.
As to bad faith use, in the absence of a website under <brother.biz> there is no evidence of the use (let alone the bad faith use) of the domain name. In this connection, the Panel notes that the intended use of the domain name for a website for family-themed products including hats and clothing would not in itself infringe Complainantís trademark rights, which relate to entirely different products. Therefore, the Panel concludes that there is no (evidence of) bad faith use of the domain name <brother.biz>.
Respondent has requested a ruling of reverse domain name hijacking from the Panel. Article 15 of the STOP Rules provides that "If after considering the submissions the Panel finds that the Complaint was brought in an attempt at reverse domain name hijacking the Panel shall state its findings to this effect in its decision."
In the present case, Complainant contacted Respondent prior to filing the STOP Complaint. Respondent sent Complainant information about his intentions for the domain name at issue. However, as Respondent has apparently not yet set up a website, nor started his web-store and since Respondent (in the correspondence provided to the Panel) did not offer any documents or other evidence of its intentions, Complainant could not easily investigate or verify Respondentís plans. Accordingly, the Panel finds that there is insufficient evidence to conclude that Complainant has engaged in reverse domain name hijacking.
On the basis of the foregoing, the Panel decides that the Complaint should be denied and that the request for a ruling of reverse domain name hijacking should be denied.
Wolter Wefers Bettink
Dated: July 12, 2002