WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dial Corporation v. Perpetual Advantage, Inc.
Case No. DBIZ2002-00100
1. The Parties
The Complainant is The Dial Corporation, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Scottsdale, Arizona, United States of America.
The Respondent is Perpetual Advantage, Inc., with address in Escondido, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <coast.biz>.
The registrar of the disputed domain name is DomainPeople, Inc., with business address in Vancouver, British Columbia, Canada.
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 ("WIPO") on April 26, 2002, and received in hardcopy on April 30, 2002. WIPO 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 7, 2002, WIPO 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 May 27, 2002.
(c) WIPO received a response by fax from Respondent on May 27, 2002, and by e-mail on May 28, 2002. By e-mail of May 29, 2002, WIPO acknowledged receipt of the response.
(d) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on June 10, 2002, WIPO appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment. WIPO advised the Panel that absent exceptional circumstances it would be required to forward its decision to WIPO by June 24, 2002.
(e) By e-mail of June 21, 2002, the Panel transmitted its decision in this matter to WIPO, and requested confirmation of certain procedural aspects of the NeuLevel STOP registration system. By e-mail of June 26, 2002, WIPO advised regarding those procedural aspects. The Panel then expanded discussion of certain procedural aspects in its decision.
(f) 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 (as assignee of The Proctor & Gamble Company) is the holder of registrations for the word trademark "COAST" on the Principal Register of the United States Patent and Trademark Office ("USPTO"), Reg. No. 834,134, dated August 27, 1967, in International Class (IC) 3 (covering "Soap and synthetic detergents for household washing and cleaning purposes), claiming date of first use and first use in commerce of December 16, 1959, and Reg. No. 1, 007,242, dated March 25, 1975, in IC 3 (covering "Toilet soap"). Complainant also holds trademark registrations for the word and word/design mark "COAST" in a number of other countries. (Complaint, para. 13 & Annex 5)
Complainant advertises of its "COAST" marked soap and detergent products. At Complainantís <www.dialcorp.com> website there is a web page with links devoted to Coast deodorant soap. (Id., para. 13 & Annex 4)
According to a .biz Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name <coast.biz> on March 27, 2002. (Id., Annex 1)
As of the commencement of this proceeding, Respondent has made no use of the disputed domain name in connection with an active Internet website. (Complaint, para. 13 & Annex 7). Respondent asserts that its failure to use the disputed domain name promptly following registration is a consequence of an initial waiting period established by the registrar. Respondent asserts that it intends to use the disputed domain name in connection with listing and offering for sale coastal real estate properties, and that it is prepared to activate its website as soon as the disputed domain name is released for use by the registrar.
According to a USPTO Trademark Electronic Search System (TESS) search, there are 729 live trademark and service mark registrations and applications including the term "COAST" (Response, para.2, including Internet link). These include at least seven active registrations in addition to those held by Complainant for the term "COAST" alone, with or without design. Four of those registrations are for the term without design. These registrations include Reg. No. 2277179, dated September 14, 1999 (in IC 9, covering computer software); Reg. No. 1915815, dated August 29, 1995 (in IC 10, covering medical instrumentation); Reg. No. 0960476, dated June 5, 1973, (in IC 25, covering shoes); Reg. No. 0963790, dated July 10, 1973 (in IC, 20 covering cake ornaments). (Panel visit of June 16, 2002, to <tess.uspto.gov>, TESS search)
The domain name <coast.com> is actively used by "Coast Software", the registered holder of the "COAST" word mark at the USPTO in IC 9, in connection with advertising its software products on the Internet (Panel visit of June 29, 2002).
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, DomainPeople, 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 WIPO is one. This Panel is appointed by WIPO to decide the complaint under the STOP Policy pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant alleges that the disputed domain name is identical to a trademark in which it has rights. Complainant asserts that the "COAST" mark is famous, stating, "the COAST name has become famous in association with personal care deodorant soaps" and "The COAST mark is famous, and is known and recognized worldwide as identifying Complainantís products".
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant states that Respondent has not made use of the disputed domain name, and that it has been unable to find any use by Respondent of the term "COAST" on the Internet or elsewhere. Complainant indicates that Respondent has not been identified or in business under the disputed domain name, and is not making legitimate noncommercial or fair use of the name.
Complainant asserts that to demonstrate rights or legitimate interests, "it is incumbent upon the Respondent to produce Ďconcrete evidenceí of such rights and interests that must go beyond mere assertion". According to Complainant, failure to provide such evidence is "tantamount to admitting the truth of Complainantís assertions".
Complainant alleges that Respondent has registered and used the disputed domain name in bad faith. This is said to be evidenced by mere registration of Complainantís famous mark to usurp its goodwill. Respondent must have intended to divert Internet traffic for commercial gain or to extract funds from Complainant. Complainant further alleges that "by failing to provide any legitimate use of the <coast.biz> domain, or indeed any use at all, Respondent is presumed to be using the domain in bad faith".
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
Respondent asserts that it is "engaged in seeding, developing and promoting startup corporations and strategies". It refers to one of its existing enterprises "TradingSystem.Com that automates financial trading".
Respondent states that it intends to use the disputed domain name for "the listing and sales of coastal real estate enterprises". Respondent asserts that the domain name is not for sale, and will be used in connection with an active commercial website "as soon as the name is released from restrictions placed on it by the registrar".
Respondent asserts that parties other than the holder of a trademark registration are entitled to use an identical term "as long as the product or service does not conflict with the product or service for which the identical mark is registered." Respondent argues that there are numerous live trademark registrations using the term "COAST" in addition to those held by Complainant. Respondent asserts that it has common law rights to use the term "COAST" in connection with a business activity not connected with that of Complainant.
Respondent asserts that Complainant does not hold domain name registrations for <coast.com>, <coast.org> or <coast.net>, and that its actions against Respondent amount to reverse domain name hijacking.
Regarding rights or legitimate interests, Respondent states:
"the domain name is slated to be used as part of our international coastal real estate property listing service and sales. Search engines have not revealed the domain since it is a new business enterprise that we have plans to utilize as soon as restrictions are lifted on the use of the name. We have attempted several times to publish our web page documents via the registrar but were unable since the process requires a 30 day waiting period before usage".
"Our business plan summary: The enterprise involves the use of aerial photographs and mpeg video walkthroughs to display to the consumer prospective properties for sale. Additionally our listings would provide for help from finance institutions, banks and real estate agencies. The properties listed would include properties in the continental United States, Europe, South America, Africa and various Islands and Island properties. We receive commissions for both listing and sales of properties and commissions from financial lending institutions."
Regarding bad faith, Respondent argues that it did not register the disputed domain name in bad faith since it intends to use it in connection with a business activity wholly distinct from that of Complainant. Respondent indicates that it has not used the name solely because of a 30 day restriction imposed on new registrants imposed by the registrar, and that it had and has no intention to sell the disputed domain name to anyone.
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 generic top level domain (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.
Respondent acknowledged notice of commencement of this proceeding and submitted a response in a timely manner. Respondent does not contest the applicability of the STOP Policy to it.
Complainant has submitted substantial evidence of its rights in the word trademark "COAST", including registration on the Principal Register at the USPTO (see Factual Background, supra). Respondent has not challenged Complainantís rights in the "COAST" mark in so far as those rights may be limited regarding the products as to which the marks are used. The Panel determines that Complainant has rights in the trademark "COAST".
The STOP Policy differs from the UDRP in that a disputed domain name must be shown under the STOP Policy to be "identical" to a mark for a remedy to be granted. In this proceeding, the disputed domain name <coast.biz> is identical to the word trademark "COAST", with exception of addition of the .biz gTLD. Addition of the .biz gTLD in the circumstances of this proceeding doe not affect comparison of the disputed domain name and mark. The Panel determines that the disputed domain name and the "COAST" mark are identical within the meaning of the STOP Policy.
This sole panelist had occasion to analyze the elements necessary for establishing a famous mark in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 and Monty Roberts v. J. Bartell, WIPO Case No. D2000-0300. Among the principal criteria for establishing fame are "the degree of inherent or acquired distinctiveness of the mark" and "the duration and extent of use of the mark in connection with the goods or services with which the mark is used".
The word "COAST" is a common descriptive term of the English language referring, inter alia, to a geographic location near the boundary between land and ocean. Complainant does not use the word "COAST" in this commonly descriptive sense as its mark. Instead, the term is used suggestively, if not arbitrarily, to refer to deodorant soap products. In the context of its usage, Complainantís mark is distinctive.
Complainant has not presented evidence of distinctiveness and fame sufficient to persuade the Panel that Internet users and consumers throughout the United States strongly identify the word "COAST" with Complainantís soap and detergent products such as to establish it as a famous mark. Complainant has presented evidence of a substantial number of trademark registrations, and has asserted the fame of the mark. Complainant has not presented evidence of the level of advertising expenditures in connection with the particular mark, nor of consumer association of the mark with the Complainantís product. The Panel notes that even if Complainant had presented sufficient evidence to establish fame of the mark in connection with deodorant soap products, this would not have changed the Panelís finding in this proceeding regarding bad faith.
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 [respondentís] 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.
Respondent has argued that it has rights to use the term "COAST" in connection with an Internet real estate services business because that use will not infringe on Complainantís rights in respect to use of the term in connection with soap and detergent products. There are in fact a variety of business uses of the term "COAST" that might be made outside the product scope of Complainantís mark as evidenced, inter alia, by the USPTOís registration of several identical "COAST" marks in classes of products or services outside that of Complainantís line of soap and detergent products.
Respondent does not yet enjoy common law rights in "COAST" as a service mark since there is no evidence that Respondent has used the term in commerce. For this reason, Respondent does not establish rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(i) of the STOP Policy.
However, Respondent further asserts that it has made preparations to use the disputed domain name in connection with a bona fide offering of services prior to notice of a dispute within the meaning of paragraph 4(c)(ii) of the STOP Policy. Although Respondent has not provided evidence in the form of a formal business plan for its claimed coastal real estate business, it has provided evidence of a separate Internet services business it established (TraderSystem.Com) (stated on its home page as operated by Respondent), lending some credibility to its claimed intention to establish an additional service business enterprise.
The NeuLevel distribution method adopted regarding allocation of .biz gTLDs during the start-up period includes notification to applicants for domain names of third party trademark claims prior to conclusion of the registration process (see Statement on the Change of Distribution Methods for .Biz Domain Names on Registry Reserve, Step 2: Matching Applications Against IP Claim Database and Step 3: Proceed/Cancel Process, at <http://www.neulevel.biz/faqs/distr_methods.html>, visited by Panel June 29, 2002). Under this procedure "this notification will include the IP claimant's alleged trade or service mark, its contact information, the date the trade or service mark was first used, and whether the mark is registered, applied for, or protected under common law" (Step 2, id). After receipt of the notification "In order to proceed with the domain name application, a domain name applicant that receives a conflict notice must elect to proceed with the application despite being notified of its own, or a third parties' intellectual property rights" (Step 3, id.).
The notification procedure for the .biz start-up period may affect a determination regarding whether a registrant had "any notice Ö of the dispute" within the meaning of paragraph 4(c)(ii) of the STOP Policy. However, the legal effects of such notification will vary depending on the context. Bona fide preparations to use a .biz domain name or a name corresponding to the domain name might have commenced prior to the application for registration, and before notification of a trademark claim. In circumstances in which prior notification of a trademark claim relates to a mark in the same or a similar channel of commerce as that of an applicantís intended use, a "dispute" might be presumed to exist as of the time the notification is received (though it is difficult to rule out facts that might rebut that presumption). In this proceeding, notification to Respondent that Complainant asserted rights in the "COAST" mark for soap and detergent products does not automatically imply that a dispute existed concerning Respondentís asserted intention to use the word "COAST" (in connection with a coastal real estate business) if or when Respondent commenced preparations to use.
Complainant argues that Respondentís failure to actively use the disputed domain name promptly following registration evidences lack of rights or legitimate interests, as well as bad faith. Yet domain name registrants are not required to make immediate use of those names to establish such rights or interests, and the procedures of the .biz registrar in placing a hold on use of the domain name to allow initiation of a STOP Policy proceeding effectively precluded Respondent from such immediate use here. The Panel cannot draw an adverse inference against Respondent based on its failure to use the disputed domain name prior to commencement of this proceeding. This leaves the Panel with the task of assessing the credibility of Respondentís stated intention to use the disputed domain name in connection with a real estate service business.
Respondent has in fact established at least one Internet service business other than the one it has claimed to plan. This suggests in a circumstantial way that Respondent is serious in its assertion of preparations to use the disputed domain name for a bona fide offering of services. Moreover, the word "COAST" is a logical choice of domain name identifier for a coastal real estate business, and such use would not appear to infringe on Complainantís mark. The Panel considers that Respondentís assertions regarding intention to commence a bona fide offering of services under the disputed domain name are plausible, yet the Panel will decline to make a finding in this regard. The Panel instead bases its finding in this matter on a determination as to the element of bad faith.
Complainant argues that the Panel should find that Respondent registered or used the disputed domain name in bad faith based on inference from Respondentís failure to use the name and the alleged fame of Complainantís mark.
As discussed above, the Panel cannot draw an inference from failure to use a disputed domain name in circumstances in which no such use was reasonably possible.
Complainant has referred to several decisions under the UDRP in which respondents are found to have acted in bad faith based on nonuse (or passive holding) of a domain name (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ingersoll-Rand v. Frank Gully, d/b/a/ Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055). Yet those cases do not compel the inference Complainant would have the Panel draw here. In Telstra, Ingersoll-Rand and Guerlain, as examples, the marks were not descriptive words as is "COAST". Moreover, each of those cases involved factors beyond non-use. In Telstra, misleading registration information; in Ingersoll-Rand, prior use to redirect to pornographic websites; in Guerlain, multiple registrations of marks of third parties. In short, the panels in those proceedings undertook a contextual analysis of the particular circumstances of non-use that included factors different than those presented here.
In the present proceeding, the commonly descriptive character of the term "COAST" outside Complainantís specific trademark usage does not support an inference that Respondent intended to use that mark to divert Internet traffic by confusing consumers. It is significant to note that the domain name <coast.com> is actively used by Coast Software, another registered holder of the "COAST" mark, in connection with advertising its software products.
There is no evidence that Respondent has registered the disputed domain name to prevent Respondent from registering it. Respondent has not offered to sell the name to Complainant or any other party. There is no suggestion that Respondent is a competitor of Complainant, or is attempting to disrupt its business. Finally, Respondent offers a reasonable explanation for its decision to register the disputed domain name.
The Panel finds that Complainant has not established that Respondent registered or used the disputed domain name in bad faith, and therefore declines to direct the registrar to transfer the name.
The Panel appreciates the interest of Complainant in policing the use of its mark. There is no reason to believe that Complainant has acted otherwise than in good faith in initiating this proceeding. The Panel rejects Respondentís suggestion of reverse domain name hijacking.
Based on its determination that Complainant, The Dial Corporation, has failed to establish that Respondent, Perpetual Advantage, Inc., registered or used the disputed domain name <coast.biz> in bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the STOP Policy, the Panel declines to direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott
Dated: June 30, 2002
1. 15 USCS ß 1125(c), and see generally, Avery Dennison v. Sumpton, (9th Cir. 1999), 189 F.3d 868, 876.
2. According to Merriam-Webster's Online Collegiate Dictionary, "coast" as a noun is "1: the land near a shore: seashore".
3. In a related case involving proceedings initiated by Complainant against another respondent, the Panel determines that Complainant has established that its mark "DIAL" is "famous". Indeed, Complainant appears to acknowledge the distinction between its "DIAL" mark and its "COAST" mark by referring solely to "DIAL" as "highly famous" in its complaint in the related proceeding. The Panel relied on its own experience of the heavily advertised nature of "DIAL" soap in making the determination of fame. Complainant's submitted proof in regard to "DIAL" is not significantly different than its proof in respect to "COAST", except that the "DIAL" mark is registered in a substantially greater number of countries (although Complainant did not refer to specific numbers of countries, it did provide lists of active registrations).
4. The distribution method was modified as a consequence of litigation involving the registrar, but this modification did not alter that part of the distribution method described above.
5. The details of this procedure are not set out in the STOP Policy and Rules, nor were they discussed by Complainant in its complaint here. However, they they have been described in earlier decisions under the STOP Policy (see Gene Logic Inc v. Cho Kyu Bock, FA0112000103042 (NAF), decided March 4, 2002, description adopted in Kuchler Electronics GmbH v Rocco Mancini, WIPO Case No. DBIZ2002-00005, decided May 31, 2002).
6. See, e.g., Bergen's Greenhouse, Inc. v. Jennifer Barnes, WIPO Case No. D2000-1503, decided February 18, 2001, and Dr. Ing. h.c.F. Porsche AG v. Charlie Brown, WIPO Case No. D2001 0919, decided September 15, 2001.
7. Since the Panel does not make a finding regarding paragraph 4(c)(ii) of the STOP Policy, it need not determine whether Respondent had notice of a dispute prior to preparations to use the disputed domain name.