WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dial Corporation v. Swarthmore Associates, LLC
Case No. DBIZ2002-00102
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 Swarthmore Associates, LLC, with address in Pacific Palisades, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is <dial.biz>.
The registrar of the disputed domain name is PSI-Japan, Inc., with business address in Tokyo, Japan.
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, telefax and e-mail, and advised that the deadline for transmission of a response was May 27, 2002.
(c) WIPO received a response by e-mail on May 28, 2002, and in hard copy on May 31, 2002. Respondent noted that May 27, 2002, was a public holiday (Memorial Day) in the United States of America. 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 Armour & Company) is the holder of registrations for the word trademark "DIAL" on the Principal Register of the United States Patent and Trademark Office ("USPTO"), among others, Reg. No. 690,673, dated December 29, 1959, in IC 3 (covering "Bath and toilet soap"), claiming date of first use in commerce of November 1947; Reg. No. 731,288, dated May 8, 1962, in IC 3 (covering "Germicidal liquid soap"); Reg. No. 1,691,108, dated June 9, 1992, in IC 3 (covering "toiletries", as further specified), and Reg. No. 2,067,901, dated June 3, 1997, in ICís 3 and 5 (covering "All purpose cleaning preparations", as further specified). Complainant also holds trademark registrations for the word and word/design mark "DIAL" in numerous other countries. (Complaint, para. 13 & Annex 3)
Complainant widely advertises its "DIAL" marked soap, detergent and toiletry products. (Id.)
According to a .biz Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name <dial.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 5). Respondent asserts that its failure to use the disputed domain name promptly following registration is a consequence of an initial waiting period for use established by the registrar. Respondent asserts that it intends to use the disputed domain name in connection with "the sale of watches, telephones and other electronics manufactured and/or distributed by Pacific China Industries, Ltd. (PCI), a Hong Kong limited company specializing in manufacturing and exporting goods from China, including consumer electronics". (Response, para. 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, PSI-Japan, 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 "DIAL" mark is famous, stating, "the DIAL name has become highly famous in association with personal care soaps and other products" and "The DIAL mark is highly famous, and is known and recognized worldwide as identifying Complainant's 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 "DIAL" 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 <dial.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 acknowledges that the disputed domain name is identical to Complainantís mark used "for bath and toilet soaps and related personal care products".
Respondent asserts that it has rights or legitimate interests in the disputed domain name. Respondent argues regarding establishing such rights or interests, "All that is necessary to establish legitimate interests in respect of a domain name is a business concept that is not in disaccord with honest practices in commercial matters". Respondent indicates:
"Here, Respondent acquired the <dial.biz> domain name for use in conjunction with the sale of watches, telephones and other electronics manufactured and/or distributed by Pacific China Industries, Ltd. (PCI), a Hong Kong limited company specializing in manufacturing and exporting goods from China, including consumer electronics. It has not been possible to launch the site, because the domain registrar has advised that it cannot redirect the settings during the pendency of this STOP proceeding."
Respondent refers to the dictionary definition of "dial" as a noun, including:
"1. A graduated surface or face on which a measurement, such as time, is indicated by a moving needle or pointer.
2. a. The face of a clock or watch.
b. A sundial.
3. a. The panel or face on a radio or television receiver on which the frequencies or channels are indicated.
b. A movable control knob or other device on a radio or television receiver used to change the frequency.
c. A rotatable disk on a telephone with numbers and letters, used to signal the number to which a call is made."
Respondent indicates that it intends to use the term "DIAL" in a non-trademark sense. It further indicates that the products to be offered on its website will be "completely different than the personal care products offered by Complainant. There is no likelihood of confusion, and therefore no trademark infringement". Respondent argues that in the absence of trademark infringement there is no violation of the STOP Policy.
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 because of a restriction imposed on new registrants imposed by the registrar. Respondent asserts that lack of use in these circumstances does not evidence bad faith. It argues that Complainant has presented no documentary or other evidence establishing bad faith. Complainant asserts that "There is nothing bad faith or improper about using a common word in its generic sense."
Respondent requests that the relief requested by Complainant be denied.
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 submitted a response in a timely manner in this proceeding. Respondent does not contest the applicability of the STOP Policy to it.
Complainant has submitted substantial evidence of its rights in the word trademark "DIAL", including registration on the Principal Register at the USPTO (see Factual Background, supra). Respondent acknowledges that the disputed domain name is identical to the Complainantís "DIAL" mark as used in connection with soap, toiletries and related personal care products. The Panel determines that Complainant has rights in the trademark "DIAL" and that that the disputed domain name and the "DIAL" 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 "DIAL" is a common descriptive term of the English language referring, inter alia, to the face of a measuring device, the face of a clock or watch, or the input mechanism of a telephone. Complainant does not use the word "DIAL" in this commonly descriptive sense as its mark. Instead, the term is used suggestively, if not arbitrarily, to refer to soap and other personal care products. In the context of its usage, Complainantís mark is distinctive.
Complainant and its predecessors have used "DIAL" as a trademark for bath soap since 1947. The mark is widely advertised, at least in the United States. The mark is registered in many countries. Respondent has not specifically challenged Complainantís assertion that the "DIAL" mark is famous in the field of personal care soap and related products. The Panel accepts Complainantís assertion that the "DIAL" mark is famous in its channel of commerce, that is, soap and related personal care products.
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 "DIAL" in connection with an Internet business offering for sale watches, telephones and other electronic products because that use will not infringe on Complainantís rights in respect to use of the term in connection with soap and personal care products. Respondent intends to use the term "DIAL" in a non-trademark sense. Respondent notes that the dictionary definition of the word "dial" is descriptive of parts of some products that it intends to offer.
Respondent has not clearly identified a provision of paragraph 4(c) of the STOP Policy under which it claims to establish rights or legitimate interests, but generally refers to paragraph 4(a)(ii) of the STOP Policy. As noted above, paragraph 4(c) of the STOP Policy does not include a provision analogous to paragraph 4(c)(iii) of the UDRP regarding legitimate noncommercial or fair use, although paragraph 4(c) of the STOP Policy is expressly non-exhaustive. Thus, the STOP Policy does not preclude a finding that a Respondent is making a fair descriptive use of a disputed domain name. Yet, even under paragraph 4(c)(iii) of the UDRP, fair use is established by actual use, not contemplated use. In this proceeding, Respondent has not submitted evidence of actual use of the disputed domain name in a fair descriptive sense, even if it might be entitled to make such use. The fact that the STOP Policy has effectively precluded Respondent from making any use of the disputed domain name creates an obstacle to establishing fair use in the sense of paragraph 4(c)(iii) of the UDRP.
However, Respondentís claim might be framed as preparing 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. Respondent has not provided concrete evidence in the form of a formal business plan for its claimed watch, telephone and electronics business. This leaves the Panel with the task of assessing the credibility of Respondentís stated intention to use the disputed domain name in connection with that business.
Complainant argues that Respondentís failure to use the disputed domain name promptly following registration evidences lack of rights or legitimate interests, as well as bad faith. Domain name registrants are not required to make immediate use of those names to establish 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 immediate use here. 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. Yet Respondentís mere assertion of a business plan makes its claims difficult to assess. For this reason, the Panel prefers not to reach a determination on the issue of rights or legitimate interests in light of its more conclusive determination on the issue 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 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 common descriptive words as is "DIAL". 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 "DIAL" outside Complainantís specific trademark usage does not support an inference that Respondent intended to use that mark to divert Internet traffic by confusing consumers. The Panel acknowledges that the extent to which a mark is well known or famous may influence whether a domain name registrant evidences bad faith by its registration. In the present case, however, Complainant has established fame in a word capable of multiple descriptive meanings, and is seeking to prevent Respondent from using the word to reflect one or more of those meanings. The Panel does not consider that the fame of Complainantís mark extends to other channels of commerce such as watches and other electronic products. For this reason, the Panel will not use the fame of Complainantís mark in the field of soap to infer Respondentís bad faith in other potential channels of commerce.
There is no evidence that Respondent has registered the disputed domain name to prevent Respondent from registering it. 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. 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.
Based on its determination that Complainant, The Dial Corporation, has failed to establish that Respondent, Swarthmore Associates, LLC, registered or used the disputed domain name <dial.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. In two related cases involving proceedings initiated by Complainant against other respondents, the Panel determines that Complainant has not established that its marks are "famous". Indeed, Complainant appears to acknowledge the distinction between its "DIAL" mark and its "COAST" and "TONE" marks by referring solely to "DIAL" as "highly famous" in its complaint in this proceeding. The Panel relies on its own experience of the heavily advertised nature of "DIAL" soap in making the determination of fame in this proceeding. Complainant's submitted proof in regard to "DIAL" is not significantly different than its proof in respect to "COAST" and "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).
3. 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.
4. The Panel does not make a finding in regards to preparations for use prior to notice of a dispute. The Panel therefore need not decide whether in the circumstances of this proceeding, the notification of Complainant's trademark provided to Respondent prior to completing registration of the disputed domain name established the existence of a dispute prior to commencement of preparations for its use. In a related proceeding decided by this sole panelist, the Panel elaborates on the potential legal effects of notification during the registration process. See The Dial Corporation v. Perpetual Advantage, Inc., DBIZ2002-00100.
5. Although Complainant may be using the term "DIAL" in a suggestive or arbitrary sense (in relation to soap, toiletries and detergent), in contexts outside Complainant's trademark use, the word "DIAL" is, inter alia, a common descriptive (if not generic) term for the face of a watch or clock, or the input mechanism of a telephone.