WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dial Corporation v. Tone Freds
Case No. DBIZ2002-00101
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 Tone Freds, with address in Elwell, Michigan, USA.
2. The Domain Name and Registrar
The disputed domain name is <tone.biz>.
The registrar of the disputed domain name is Register.com, with business address in New York, New York, United States of America.
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) On May 29, 2002, WIPO transmitted by courier and 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 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 is the holder of registrations for the word trademark "TONE" on the Principal Register of the United States Patent and Trademark Office ("USPTO"), Reg. No. 1,946,839, dated January 9, 1996, in International Class (IC) 3 (covering "Hand and body lotion"), and; Reg. No. 915,202, dated June 15, 1971, in IC 3 (covering "Bath and toilet soap"). Complainant also holds trademark registrations for the word mark "TONE" in a number of other countries. (Complaint, para. 11 & Annex 4)
Complainant advertises its "TONE" marked soap and toiletry products. On its website located at <www.dialcorp.com>, Complainant advertises its "TONE" line of products, and offers information regarding stores where such products may be purchased. (Id., & Annex 3)
According to a .biz Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name <tone.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 (id., & Annex 6).
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, Register.com, 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 further alleges that "the TONE mark has become famous in connection with personal care soaps" Ö 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 "TONE" on the Internet or elsewhere. Complainant indicates that Respondent has not been identified 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 <tone.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 has not replied to the complaint.
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.
WIPO 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 WIPO 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 substantial evidence of its rights in the word trademark "TONE", including registration on the Principal Register at the USPTO (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark "TONE" and that the disputed domain name and the "TONE" 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".
Complainant may be using the word "TONE" in a suggestive sense as a trademark. Nonetheless, the word is a common descriptive term in the English language, meaning, inter alia, a musical sound, a color quality, or a state of good health. The word is commonly used with these associations intended. 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 "TONE" with Complainantís soap and toiletry 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 Complainantís product.
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 not replied to the complaint, and has offered no basis upon which the Panel might conclude that it has established rights or legitimate interests in the disputed domain name. Respondent has not established that it owns or is beneficiary of a mark identical to the disputed domain name, that it has made preparations to use the name for a bona fide offering of goods or services, or that it has been commonly known by the domain name. The Panel will consider the significance of the common descriptive nature of Complainantís mark in its determination regarding 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.
Complainant argues that Respondentís failure to use the disputed domain name promptly following registration evidences bad faith. Yet 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. The Panel cannot draw an adverse inference against Respondent based on its failure to use the disputed domain name prior to the commencement of this proceeding.
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 "TONE". 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.
The registration of a distinctive famous trademark might establish an inference that the registrant acted in bad faith. The Panel is unable to infer bad faith solely from registration by Respondent of a common descriptive term in the English language. There are a variety of commercial uses of the word "TONE" outside Complainantís use as a trademark in connection with soap and toiletry products. Registration of <tone.biz> does not in the Panelís view support an inference that Respondent intended to use Complainantís mark to divert Internet traffic by confusing consumers.
There is no direct evidence that Respondent registered the disputed domain name to prevent Respondent from registering it. By operation of the NeuLevel distribution method for .biz domain names during the start-up period, Respondent was notified of Complainantís assertion of rights in the "TONE" mark prior to completion of the registration process. The question arises whether such knowledge, standing alone, is sufficient to establish an inference that Respondent registered the disputed domain name to prevent Complainant from registering it. The Panel does not think such an inference is warranted in the circumstances of this proceeding. As noted above, the word "TONE" is capable of a variety of business uses that would not be associated with Complainant and its "TONE" products. The inference that Respondentís actions were directed at Complainantís mark would require the Panel to attribute a particular motive where several other motives are plausible. There is no suggestion that Respondent is a competitor of Complainant, or is attempting to disrupt its business.
Respondent has not offered to sell the name to Complainant or any other party.
Respondentís failure to reply to the complaint does not establish bad faith.
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.
Based on its determination that Complainant, The Dial Corporation, has failed to establish that Respondent, Tone Freds, registered or used the disputed domain name <tone.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. Mirriam-Webster's Online Collegiate Dictionary defines "tone" as a noun as:
"1 : vocal or musical sound of a specific quality Ö; especially : musical sound with respect to timbre and manner of expression
2 a : a sound of definite pitch and vibration b : whole step
3 : accent or inflection expressive of a mood or emotion
4 : the pitch of a word often used to express differences of meaning
5 : a particular pitch or change of pitch constituting an element in the intonation of a phrase or sentence
6 : style or manner of expression in speaking or writing
7 a (1) : color quality or value (2) : a tint or shade of color b : the color that appreciably modifies a hue or white or black
8 : the effect in painting of light and shade together with color
9 a : the state of a living body or of any of its organs or parts in which the functions are healthy and performed with due vigor b : normal tension or responsiveness to stimuli; specifically : muscular tonus
10 a : healthy elasticity : resiliency b : general character, quality, or trend Ö c : frame of mind : mood."
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 "TONE" 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 "TONE", 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 Panel has noted that Respondent's name as listed in its registration includes the term "TONE", but the Panel does not draw any evidentiary inference from this.
5. See description of this procedure in a related decision by this sole panelist, The Dial Corporation v. Perpetual Advantage, Inc., Case DBIZ2002-00100.