WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Souza Cruz S.A. v. Null

Case No. DBIZ2002-00116

 

1. The Parties

The Complainant in this administrative proceeding is Souza Cruz S.A, a company incorporated under the laws of Brazil with a principal place of business located at Rua Candelaria 66, Rio de Janeiro, RJ, Brazil.

The name of the Respondent is Null. The Respondent has an address at 358 6th Street, Hoboken, NJ, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <personaltouch.biz>.

The Registrar with which said domain name is registered is DomainPeople, (hereinafter "the Registrar"), located at Suite 1440, Harbour Center 555 West Hastings Street Vancouver, BCV6B 4N6, Canada.

 

3. Procedural History

On April 26, 2002, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail. The hard copy of the Complaint was received by the Center on May 3, 2002.

In accordance with paragraph 4(a) of the Rules for Start-up Trademark Opposition Policy for .BIZ (the "STOP Rules") the Center verified that the Complaint satisfied the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the STOP Rules and the WIPO Supplemental STOP Rules and that payment in the required amount had been paid by the Complainant.

On June 3, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that this Administrative Proceeding had commenced on June 3, 2002, and that the Respondent was required to submit a Response to the Center on or before June 23, 2002.

It is noteworthy that the Notification sent by Post Courier was returned to the Center by the courier as undelivered. The Notification sent by e-mail was addressed to administrative contact for the registration viz. Mr. Richard Zellmer at the e-mail address provided by the Respondent to the Registrar.

No Response was received by the Center and on June 26, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorized representative of the Complainant by e-mail.

On July 9, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the STOP Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. A Notification of Appointment of Administrative Panel and Projected Decision Date was sent to the Parties by e-mail. On the same day the case file was transmitted to the Administrative Panel.

While it is clear that there has been a problem serving the Respondent by courier, the Respondent has been properly served in accordance with rule 2(iii) of the STOP Rules. In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant, formerly known as Companhia Souza Cruz Industria e Comercio is the registered proprietor of the following registrations for the mark PERSONAL TOUCH & Device:

Brazilian trade mark Registration No: 811454452

International Class: 29 (formerly Brazilian local class 29.30)

Goods: Fruit, greens, vegetables and cereals

Brazilian trade mark Registration No: 811454479

International Class: 1 (formerly Brazilian local classes 01.45, 01.50 and 01.55)

Goods: Fertilizers in general; substances and chemical products used to destroy weeds and noxious insects and animals; substances and chemical products for agricultural and cattle breeding activities.

Brazilian trade mark Registration No: 811454495

International Class: 31 (formerly Brazilian local class 10.10)

Goods: seeds, seedlings, natural plants and flowers.

Brazilian trade mark Registration No: 811454401

International Class: 34 (formerly Brazilian local class 34.20)

Goods: Articles for smokers

Brazilian trade mark Registration No: 811454410

International Class: 22 (formerly Brazilian local classes 12.10 and 12.20)

Goods: Tents, huts, canvass, beach umbrellas and hammocks; floats, life

preservers and parachutes.

There is no information available relating to the Respondent except for the registration and contact details set out in the Complaint as provided by the Respondent to the Registrar and available on the Registrarís WHOIS database.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that this dispute is properly within the scope of the STOP and that the Respondent is required to submit to these Administrative Proceedings in accordance with paragraph 4(a) of the STOP on the grounds that

i. the 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 Domain name was registered or is being used in bad faith.

The Complainant submits that it is the owner of the above referenced registrations for the Brazilian trademark PERSONAL TOUCH. In support of this claim the Complainant has furnished copies of the registration certificates for the above registrations. The Complainant claims that the PERSONAL TOUCH trade mark has been in use by the Complainant since at least January 1, 1983.

The Complainant submits that the disputed domain name <personaltouch.biz> is identical to the trade marks used and registered by the Complainant.

The Complainant submits that the Respondent failed to submit any IP claim, or any valid IP claim, to support its application for the disputed domain name, as required under the rules established by Neulevel, Inc, the Registry Operator for .BIZ domain names. The Complainant is not aware of any trade mark registration owned by the Respondent which would support the Respondentís right to register the disputed domain name. Consequently, the Respondent has attempted to obtain a registered domain name with a blatant disregard for the legitimate IP rights of the Complainant and the regulations for registering domain names provided by Neulevel Inc. In support of this allegation the Complainant has furnished this Administrative Panel with a copy of the regulations supplied by Neulevel for the filing requirements of a .BIZ domain name annexed to the Complaint.

The Complainant contends that the Respondent filed the application for the domain name primarily for the purpose of selling, renting, or otherwise transferring the ensuing domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.

The Complainant is not aware of any use having been made of the domain name by the Respondent or any demonstrable preparations to use the name in connection with a bona fide offering of goods or services.

As far as the Complainant is aware, the Respondent (as an individual, business, or other organization) has never been commonly known by the domain name, irrespective of any trade mark or service mark rights it may or may not claim to own.

In view of the foregoing, the Complainant contends that the Respondent has no legitimate interest in the domain name and that the domain name application was made in bad faith.

B. Respondent

There was no Response filed by the Respondent.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the STOP Policy, the Complainant must prove that:

(i) the domain name in dispute 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 domain name has been registered or is being used in bad faith.

The Onus of Proof

Even though there was no Response filed in these Administrative Proceedings, the onus nonetheless rests on the Complainant to satisfy each of the above-mentioned elements in paragraph 4(a) of the STOP.

In Rodale, Inc. v. Resource Marketing, WIPO Case No. DBIZ2002-00156, the obligation on the administrative panel under STOP was stated by the learned administrative panel in the following terms:-

"the STOP requires the Panel to satisfy itself that the facts support a finding for Complainant on each of the three factors listed above. STOP Paragraph 4(a). The Panelís duty to careful scour the record is all the stronger when a Respondent has either defaulted or is appearing pro se, without legal counsel. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096."

Application of the Tests

The first element of the test in paragraph 4(a) (i) of the STOP Policy is more restrictive than that in paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999 ("the UDRP").

In Time Inc. v. DomainDiscover, WIPO Case No. DBIZ2002-00219, the learned administrative panel distinguished the tests under STOP and the UDRP in the following terms:

"There is a substantial difference between the first element that must be proven under the STOP Policy and the related element under the UDRP. Under the UDRP, a complainant must demonstrate that a disputed "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (UDRP, para. 4(a)(i)). Under the STOP Policy, a complainant must demonstrate that the disputed "domain name is identical to a trademark or service mark in which the Complainant has rights" (STOP Policy, para. 4(a)(i))."

The test in STOP has been applied by panels very narrowly. For example in Osborne Clarke v. Blacker Media, WIPO Case No. DBIZ2002-00262, the Complainantís case was based on its trademark registration for "GAMESBIZ". The Complainant had not asserted trademark rights in the word "GAME". The panel decided that the domain name "games" was not identical to the Complainantís "GAMESBIZ" trademark and dismissed the complaint. In reaching that decision the panel cited for support, the decision in Easy-Flo Vacuum Systems Ltd. v. InfoSiteServer, NAF Case, FA0204000112530 where the panel found that <potatoes.biz> was not identical to the complainantís trademark "potatobiz".

The Complainants Rights

This Administrative Panel accepts that the Complainant is the owner of a number of registrations for the Brazilian trademark PERSONAL TOUCH and Device. While it is not emphasised in the Complaint each of these registrations is in respect of a device mark consisting of a combination of elements viz. the words PERSONAL and TOUCH incorporated in a device wherein the words are set on a white or light coloured background above which there is a stylised representation of the leaf of a plant held in a human hand which is on a black or dark coloured background.

In the present Administrative Proceedings the Complainant bases it claim to relief on its ownership and use of said device marks incorporating the words "PERSONAL" and "TOUCH" and claims that that the disputed domain name <personaltouch.biz> is identical to the Complainantís said registered trade marks.

For the purposes of said paragraph 4(a) of STOP can a domain name that consists only of an alphanumeric string be "identical" to a device trademark incorporating ornamental or graphical elements?

UDRP Decisions on "Identical" or "Confusing Similarity" and Device Marks

There is a number of decisions under the UDRP, where administrative panels have considered cases in which the Complainants relied on rights in device marks.

In PADMA AG v. Padma.com, WIPO Case No. D2000-0447, the complainant had a number of registered trademarks some of which were device marks. As the complainant was the registered owner of a number of registrations for the word mark PADMA simpliciter, the administrative panel concluded that the

"second level Domain Name is identical to the various word marks of the Complainant PADMA. It is therefore not necessary to determine whether the various word-device-marks of the Complainant (which include the word PADMA) are also to be regarded identical or similar to the Domain Name."

In CGU Insurance plc v. Irving Remocker, WIPO Case No. D2000Ė1515, a distinguished three member panel, stated:

"Öthe Complainant is the registered proprietor of a device trade mark which includes the words YOUR MOVE, but only has a pending application to register the words by themselves. If the Panel were to accept that by the date of lodging its Complaint in November, 2000 the Complainant had established rights in the words YOUR MOVE on their own, it would not be difficult to conclude that the Domain Name was identical to the (unregistered) trade mark YOUR MOVE and that it was confusingly similar to the Registered Trade Mark No. 2210311. However, it is unnecessary for the Panel to decide this issue, since, for the reasons set out below, it concludes that the Complainant has failed to establish either (ii) or (iii) above."

In Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB, WIPO Case No. DTV2000-0004, the Complainant based its claims on the ownership of a number of registrations for device marks, the principal element of each of which was the word EVERYDAY. The administrative panel left the question open and concluded that the domain name <everyday.tv> was "identical or confusingly similar to the trademark and service mark in which the Complainant has rightsÖ" This finding, phrased in the alternative, was open to the administrative panel in that case, but such a finding is not available to this Administrative Panel in the present proceedings as STOP has the narrower test.

Mövenpick Holding AG v. Olive Tree Products, WIPO Case No. D2000-1540, (December 30, 2000), was a case where the complaint was based on a number of registered device marks. This Administrative Panel decided that the domain name in issue was "confusingly similar" as distinct from "identical" to the complainantís trademark. In Mövenpick the issue was not a simple comparison of a device mark and a domain name as there were three elements of difference between the domain name in issue and the complainantís registered service mark viz. the Complainant's registered service mark was a device mark, there was no umlaut over the letter "o" in the domain name and there was the further presence of the additional descriptive element "hotels" in the domain name <movenpickhotels.com>.

In Dr.Ing. h.c. F. Porsche AG v. Simon Postles, WIPO Case No. D2001-1360, the complainant was the owner of a number of registrations for the word mark PORSCHE throughout the world. Some of these were device marks. This Administrative Panel found that the domain name <porschecanada.com> was confusingly similar to the PORSCHE trademark. This decision does not assist us in the present case as the complainant was the owner of a word mark for the trademark PORSCHE simpliciter in addition to the various device marks.

Similarly, in Columbia Sportswear Company v. Mahlon Keeler, WIPO Case No. D2000-0206, the complainant was the registered owner of a registration for the trademark COLUMBIA SPORTSWEAR COMPANY simpliciter as well as a number of device marks. The administrative panel found that the domain name in issue was identical to the registered word mark.

In DCI S.A. v. Link Commercial Corporation, WIPO Case No. D 2000-1232, the administrative panel addressed the question of the application of the first element in the test in the UDRP to device marks in the following terms:

" The domain name in issue is "5asec.com". The relevant (name) part of this domain name is "5asec". The Administrative Panel finds that this part of the domain name is identical to the numerous trademark registrations of the word "5 a sec". As far as the registered trademarks are word/device marks, the distinctive word part of these word/device marks is "5asec". Thus, as far as the word and device marks are concerned, the domain name at issue is confusingly similar to these word device marks."

In Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. D2001-0964 the administrative panel was presented with a similar issue and stated as follows:

"The Complainantís registered trademark, as distinct from its trade name, appears on the material before the Panel to be the combination of the word and the propellor device.

It should be noted that the word CREAM appears in stylized form, the application in the UK in 1995 to register the word CREAM standing alone in text form having been abandoned.

Although essential or virtual identity is sufficient for the purposes of the Policy, [14] the panel finds the disputed domain name is not identical to the Complainantís trademark."

In that case the learned administrative panel set out in footnote number 14 the following comments:

"See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, (WIPO Case No. D2002-0102). For a typical US case see Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sportyís" and the domain name <sportys.com> Ė specifically, an apostrophe in the trademark and the addition of .com in the domain name Ė are "inconsequential," such that the domain name is "indistinguishable" from and "certainly Ďconfusingly similarí to the protected mark")."

In Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limite, WIPO Case No. D2000-1001, the issue was put as follows:

"Complainant has registered the word and design mark "PI" in Germany (reg. no. 898458, date of registration October 18, 1972, date of publication Nov. 30, 1972). The design portion of Complainantís mark as so registered is a line-drawing consisting of a trapezoid bisected horizontally by a straight line extending beyond the edges of the trapezoid on each side. The straight line is bounded on each end by a curved line giving the appearance of open- and close-parentheses. The word portion of Complainantís mark as so registered consists of the narrow line-drawn capital letters "PI" placed just above the top of the above-described trapezoid.

Complainantís trademark registration for "PI" in Germany is for a combination word and design mark covering International Class 9 measurement equipment. Complainant holds no trademark registrations for "PI" standing alone as a word mark."

The administrative panel concluded that

"Respondent had not established that Complainant has not established that it has rights in the trademark "PI" standing alone. If it has weak common law rights in the mark, Respondentsí "pi.com" domain name is not confusingly similar since it has been used only in relation to one or more unrelated lines of services."

In Cattlecare Limited v. Wairua Holdings Pty Ltd t/a Poplar Pastoral Co., WIPO Case No. D2001-1373 the administrative panel stated:-

"Identical or Confusingly Similar Trademarks

7.1 The "Cattlecare" trade mark is a composite mark of which the word "Cattlecare" forms only part. However, it clearly constitutes the name by which the trade mark would be known and described. It is inevitable that in oral description of the mark, it would be known as the "Cattlecare" mark. Considered in the context of use as a domain name, it is the only part of the mark capable of such use. The Panel is therefore of the opinion that the domain name is confusingly similar to the "Cattlecare" trade mark.

7.2 Complainant's claim to trade mark rights is not, however, confined to the "Cattlecare" trade mark as registered. It has produced extensive and well documented evidence of widespread use, acknowledgement and acceptance of the word "Cattlecare" per se as primarily identified with Complainant and the Cattlecare Scheme.

7.3 The Panel is therefore also of the opinion that the word "Cattlecare" per se is a trade mark in which Complainant has rights and the domain name is identical to that trade mark."

Later in that decision however, the Administrative Panel concluded that the domain name was "confusingly similar" to a trademark in which Complainant had rights.

In Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, the panel noted that the Complainantís application for its mark PARIS LAS VEGAS was a composite word and design mark. The Panel further noted that the mark as it appears on Complainantís www site was also stylized, in the identical form appearing in Complainantís trademark application.

In reaching its decision, the panel did not consider the distinction between "identical" and "confusingly similar", but, as he was entitled so to do under the UDRP, decided that the Complainant had established the first element of the test, and commented:

"Since a domain name cannot include design elements, the domain name cannot be identical to the stylized version of Complainantís mark. But this is not fatal to Complainantís claim. First, the dominant portion of Complainantís word and design mark is the term PARIS LAS VEGAS; that is the term which would be used by consumers and the press in referring to the Complainant and its hotel and casino services. This was evident from the text of e-mails referring to Complainant as PARIS LAS VEGAS or some variation thereof, and newspaper clippings to the same effect. The e-mails also prove that consumers were being confused, despite the fact that the address they e-mailed contained no design element. "Where the dominant portion of both marks is the same, then confusion may be likely, notwithstanding peripheral differences." 3 McCarthy on Trademarks and Unfair Competition, ß 23:44 and cases cited at fn. 3 (2000). Here, confusion is not just likely, it is actual.

Finally, the fact that Complainantís design element is not reproduced in Respondentís domain name is of no practical significance. Because domain names cannot include design elements, Internet users must seek a website by typing in the name they know, rather than a design element. For example, Internet users cannot (yet) find a website for Nike shoes by typing in a "swoosh." Likewise, Internet users cannot type in a representation of the Eiffel Tower in order to find Complainantís website relating to its PARIS LAS VEGAS hotel and casino."

In Cadbury Limited v. Jonathan Harris,WIPO Case No. D2000-1249, the complainant based its claim on its ownership of numerous trademarks including its registrations for the word mark CADBURY and its rights in the trademark CADBURYLAND. The panel found it unnecessary to base his decision on the claimed rights in the CADBURY trademark and proceeded to consider the application of the test to the various CADBURYLAND trademarks. The complainant had registered CADBURYLAND as a trade mark in various formats, in the U.K. and Ireland, with the earliest registration dating from 1998, but had no registration of CADBURYLAND as such. The learned panel found that the domain name was "confusingly similar" to the complainantís trademark and commented:

"An examination of the four trademarks produced as proof of this claim clearly shows that none of them is identical to the disputed domain name cadburyland.com, and that the question of confusing similarity gives rise to some doubts and deserves a closer examination.

The pending Irish trade mark application No. 213689 consists of a dark rectangle enclosing a shaky outline which surrounds the word NOBBLE and, much smaller and hardly visible to the naked eye, the CADBURY signature over the word LAND in block capital letters over a ĎSplashí device. U.K. registered trademark No. 2189896 is very similar to the above, but it consists only of the word NOBBLE and the CADBURY LAND ĎSplashí device. U.K. pending trademark No. 2242513 consists of the three words CADBURY LAND and SHUSH in block capital letters. U.K. registered trademark No. 2173016 consists of a dark rectangle enclosing the word CADBURY in script over the word LAND in block capital letters, over the same ĎSplashí device.

Confusing similarity, in trademark law, is a somewhat subjective test. What is similar to one person may not be so to another. It was held by the European Court of Justice in the SABEL/PUMA case (C-251/95 of November 11, 1997) that: "In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components".

In Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270, the panel applied a test of "virtual or essential identity" to a UDRP case involving a claim based on a device mark. This is a concept that was considered in Cream Holdings Limited v. National Internet Source, Inc., WIPO Case No. D2001-0964 supra where the panel stated that "essential or virtual identity is sufficient for the purposes of the [UDRP]"

In Porto Chico Stores, Inc. the complainantís mark as depicted in each of the certificates of registration submitted to the panel was a stylized form of the words "lovely girl", with a picture of a heart replacing the letter "o" in "lovely".

" Taking into account the particular stylized form of the complainantís trademark, the panel finds the domain name <lovelygirls.com> to be virtually identical and confusingly similar to the trademark LOVELY GIRL. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998), (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997), ("In the context of Internet use, [Ďepix.comí] is the same mark as [ĎEPIXí]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997, U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997), (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), affíd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

Neither the suffix "s" nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark LOVELY GIRL.

Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainant has established both sufficient identity and confusing similarity."

It could be argued that the above decisions are of little value in deciding a case under STOP, because the administrative panels in the above cases, could dispatch the issue by deciding on the "confusingly similar" ground under the UDRP and so did not find it necessary to consider the limits of what is meant by the term "identical". It can also be argued that a test of "virtual or essential identity" applies to the UDRP, where a panel can decide on the basis of confusing similarity, but does it automatically follow that this test applies in STOP cases?

UDRP Decisions on concept "Identical" and Device Marks

There has been a number of .biz decisions under STOP where the administrative panels were faced with difficult decisions involving the interpretation of the word "identical" in the context of the tests in STOP.

The decision in The Boots Company Plc v. Challenge Services, Inc. (CSI), WIPO Case No. DBIZ2002-00096, does not give much in the way of assistance in this case. The administrative panel concluded that it did not have to decide the question of identity because the case could be determined on the other elements of the test in paragraph 4 of STOP. The issue was stated in the following terms:

"The Domain Name at issue is <boots.biz>. Complainant is the holder of registered trade marks for stylized versions of the word "boots". As emphasized by this Panel in Cantiere Nautico Cranchi S.R.L. v. Rapier USA, Inc., WIPO Case No. D2002-0060, design elements cannot be part of a domain name which only consists of letters and numbers. The same is true for stylized versions of a word. Yet, the Domain Name at issue <boots.biz> is confusingly similar or even identical to the word part of the registered stylized versions of the word "boots" of Complainant. Nevertheless, the STOP Policy imposes an affirmative burden on the Complainant to establish that the disputed domain name is identical to Complainantís trade or service mark. The standard of confusing similarity found in the Uniform Domain Name Dispute Resolution Policy (UDRP) was specifically excluded from the STOP Policy as it is a dispute policy for start-up .biz registrations and was put in place to address only the most clear-cut cases of abusive domain name registrations."

In Fiat Auto S.p.A v. Italienska bil, WIPO Case No. DBIZ2001-00030 the trademark upon which the Complainant relied was ALFA ROMEO, written in two words. The domain name in dispute was <alfaromeo.biz> that consisted of one word being the words "alfa" and "romeo", written together. The administrative panel reached the conclusion that the domain name <alfaromeo.biz> was identical with the trademark ALFA ROMEO, in which the Complainant had rights.

Most recently, in AT&T Corp. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00077 the learned panel found that the elimination of an ampersand in the domain name was of no significance and that the domain name at issue <att.biz> was identical to Complainant's AT&T mark. The panel stated as follows:

"The question of identity has been raised in many UDRP decisions. Where the differences between the domain name and the mark can be accounted for by the technical limitations imposed on the domain name registrant, the domain name and the mark have been treated as identical. See, e.g. Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 (elimination of space between words); Stella D'Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 (elimination of space and apostrophe)."

In some of the UDRP cases the panels found it unnecessary to address the question as to whether a domain name consisting of an alphanumeric string can be identical to a device mark. Where the issue was decided, it would appear that the prevailing view has been that in these circumstances, the domain names were "confusingly similar" rather than "identical" to the device marks.

For reasons given supra, while decisions in UDRP cases are very valuable to panels applying STOP, they must be considered with caution as the UDRP panels operate within a different and wider set of criteria in the first element of the test to be applied viz. "identical"/"confusingly similar". Similarly, STOP panels operate within a wider set of criteria in the third element of the test viz. under STOP it is only necessary to establish that the domain name was either registered or is being used in bad faith whereas under the UDRP the Complainant must establish that the domain name was both registered and is being used in bad faith.

As for the above decisions under STOP, in the BOOTS case, the panel clearly had concerns about whether he was entitled to make a finding that the mark and domain name were "identical" where the complainant had rights in a stylised version of the word "BOOTS".

The decisions in ALFA ROMEO, and AT&T are of limited assistance in the present case as neither was concerned with a device mark and so the issue of a graphical element in a device mark did not arise.

If the Complainantís registered trade mark was the two words PERSONAL and TOUCH, without more, the mere fact that there was a space between the two words would not be a bar to a finding that the mark was identical to a domain name consisting of the two words joined together in a single string. This could "be accounted for by the technical limitations imposed on the domain name registrant" as proposed in AT&T Corp. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00077 supra.

However in the present case, taking the Complainantís mark as a whole, and comparing it with the domain name there are significant elements of difference. It could be argued that these are differences that are imposed by the technical limitations of a domain name. A domain name in the .biz domain is an alpha-numeric string and cannot include design elements.

If the "essential or virtual identity" test were to apply in STOP, the joining together of the two words would also pass a test of "virtual or essential identity" proposed inter alia in Porto Chico Stores, Inc. supra.

For reasons given below, it is not necessary for this Administrative Panel to decide this case on the first element of the test in paragraph 4 of STOP as the Complainant has failed to establish that the domain name was registered or is being used in bad faith.

This Administrative Panel is conscious that the Complainant may well have established "common law" rights in the trademark "PERSONAL TOUCH". It is also possible that the Complainant did not make a claim to "common law" rights in the word element of the mark because the Complainant is based in a civil law jurisdiction.

As in the Cattlecare case referred to supra, it is quite possible that "PERSONAL TOUCH" is the name by which the trade mark would be known and described and the Complainant may be able to provide evidence of this.

It is also most probable that in an oral description the Complainantís mark and the goods to which it is applied, would be "PERSONAL TOUCH". The Complainant has not made out this case and in the view of this Administrative Panel, in STOP procedures such a claim would have to be substantiated by evidence, because in many instances the word elements of device marks lack distinctiveness and they are registered as device marks precisely because of the lack of distinctiveness.

The Complainant may be in a position to make out such a case in any future application it may bring under the Restrictions Dispute Resolution Policy (the "RDRP") and/or the UDRP.

Rights or Legitimate Interest

In a number of decisions under the UDRP, panelists have accepted that because there is a difficulty in proving a negative, once the Complainant makes the allegation that the Respondent has no rights or legitimate interest in a domain name the onus of proof on that element of the test shifts to the Respondent.

The second element of the test in STOP is the same as the second element of the test under the UDRP. This Administrative Panel is therefore willing to take the same approach under the STOP Policy and to find that the Complainant has satisfied the second element in the test in paragraph 4(a) of the STOP Policy.

Bad Faith

As regards the submission that the domain name was registered in bad faith, the Complainant contends that the Respondent filed the application for 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 the domain name registrantís out-of-pocket costs directly related to the domain name. No evidence of this has been provided by the Complainant.

As regards the submission that the domain name is being used in bad faith, the Complainant further states that it is not aware of any use having been made of the domain name by the Respondent or any demonstrable preparations to use the name by the Respondent in connection with a bona fide offering of goods or services. This on its own is not a basis for a finding that the domain name is being used in bad faith.

The Complainantís case is based on Brazilian registrations of a device mark. The Respondent is based in the United States of America.

The words PERSONAL and TOUCH taken together may on their own be very distinctive in Brazil, where the English language is not commonly spoken, and may even have the potential to accrue a level of distinctiveness in English language jurisdictions, depending on the goods or services to which they are applied. However, these words on their own are essentially, in the English language, a commonplace, laudatory, descriptive phrase.

Furthermore, there is no evidence or indication that the Registrant was aware of the Complainantís Brazilian trademarks until the commencement of these Administrative Proceedings.

On the other hand, this Administrative Panel could take an inference from the fact that the Respondent failed to file a Response and the fact that the Respondent gave its name as "Null" in the Respondentís WHOIS database gives some room for concern.

On balance however there is not sufficient evidence in the case as made out by the Complainant to establish on the balance of probablilities that the domain name was registered or is being used in bad faith.

In reaching this decision, this Administrative Panel is conscious that the Complainant is not precluded from bringing further proceedings under the Restrictions Dispute Resolution Policy (the "RDRP") and/or the UDRP in which it may be in a position to bring more evidence on this point also.

 

7. Decision

With specific reference to Paragraphs 4(i) of the STOP and 15 of the STOP Rules this Administrative Panel finds that the Complainant has failed to establish that the domain name in dispute was registered or is being used in bad faith and the Complainantís application must therefore be refused.

 


 

James Bridgeman
Sole Panelist

Dated: August 4, 2002