WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Gard v. Francesco Spina
Case No. DBIZ2002-00167
1. The Parties
The Complainant is John Gard of 435 Voelker Drive, San Mateo, California, United States of America.
The Respondent is Francesco Spina of 5353 Monte Bre Crescent, West Vancouver, V7W3A7, Canada.
2. The Domain Name and Registrar
The disputed domain name is <scuba.biz> and the Registrar is Network Solutions, Inc.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP"), the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on April 27, 2002, and in hard copy on April 30, 2002. Its receipt was acknowledged on May 6, 2002. On May 10, 2002, the Center informed the Complainant that the Complaint was deficient in that it involved three different claimed trademarks, three different domain names and three different respondents. The Complainant remedied this deficiency by filing an amended Complaint on May 16, 2002. The Center acknowledged its receipt on May 27, 2002, and next day formally dispatched copies of the amended Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated May 28, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the amended Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 17, 2002. No Response was filed. On June 24, 2002, the Center notified the parties of the Respondentís default. On July 5, 2002, the Respondent sent an email to the Center in response to the notice of default.
On July 17, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of July 31, 2002.
The Panel is satisfied that the amended Complaint complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed and the Panel was properly constituted.
4. Factual Background
Complainant is a computer engineer and an underwater instructor. In Complainantís own words "Although a land dealing, buy low, sell high, trade what one can type businessperson, Complainant has been in the SCUBA diving business over 30 years". On March 19, 2001, Complainant filed application No.78053863 to register <scuba.biz> as a service mark on the Supplemental Register maintained by the United States Patent and Trademark Office in connection with "educational services, namely conducting classes, seminars, conferences and workshops in the field of scuba diving". The date of first use was stated to be March 18, 2001.
Complainant has used the words SCUBA.BIZtm on his website <www.1stardrive.com> in connection with scuba diving. As at April 4, 2002, some search engines identified Complainantís website in a search for those words. Others did not yield any results. No searches identified anyone else using <scuba.biz>.
The disputed domain name was registered in the name of Respondent on March 27, 2002. The registrant email address given was <firstname.lastname@example.org> [Complaint Ex. J]. The Complaint at Ex. H contains two pages from Respondentís website <www.seamonkeybusiness.com> which contain the statement: "We at SeaMonkey Business can act as your travel agent and are here to share our first hand knowledge about sightseeing, accommodations, hotels, condos, scuba diving and other activities along the coast of Mexico between Cancun and Tulum"[emphasis added]. There are several other references to scuba diving.
5. Partiesí Contentions
The Complaint appears primarily to contain criticism of the process whereby <.biz> domain names were eventually allocated, following the court case challenging as an illegal lottery the initial method chosen by Neulevel. There is nothing this Panel can do about that. Its task is to determine whether Complainant is entitled, under the STOP, to transfer of the domain name.
However, Complainant does make the relevant claims that the disputed domain name is identical to Complainantís trademark "scuba.biz" and that Respondent has no rights or legitimate interest in the disputed domain name, which was registered in bad faith.
No Response was filed.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable. The Panel pays no regard to the content of Respondentís email to the Center. Its relevance is simply to demonstrate that Respondent received the Notice of Respondent Default, from which it may reasonably be concluded that Respondent also received the Notice of Commencement of Proceedings and the amended Complaint.
Complainant is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Failure to file a response
The Panel draws two inferences where a Respondent has failed to submit a response: (a) Respondent does not deny the facts which the Complainant asserts and (b) Respondent does not deny the conclusions which Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System (NAF Case No. FA 0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925).
Nevertheless, the Panel must be satisfied, on all the evidence presented, that Complainant is entitled to the relief sought.
Rights in a trademark
The dictionary definition of "scuba" is "a portable apparatus containing compressed air and used for breathing under water" (www.dictionary.com). That dictionary gives the following "Word History":
"Going scuba diving sounds much more appealing than going self-contained underwater breathing apparatus diving, and saying scuba leaves more breath for swimming. The name for such an apparatus, first successfully tested in 1943, was formed by taking the first letter of each word in the phrase and putting them together to form a single word. Scuba, like other acronyms, has a vowel at a point that allows it to be pronounced like an English word. The word, first recorded in 1952, has been so widely adopted that people rarely think of it as a collection of initials and use it in forming other words, such as scuba-dive. In fact, a verb scuba was first recorded in 1973 and is still in use."
In Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153, the learned Panelist held that:
"íScuba divingí is defined in the dictionary as "skin diving with scuba apparatus." (www.dictionary.com) "Scuba diving" Ö is the only name used to describe skin diving with scuba apparatus. To allow any party to have monopoly rights to use the term "scuba diving" as a trademark in connection with the sport of scuba diving would hinder the publicís ability to describe and refer to the sport."
The same sentiments must apply with equal force to the word SCUBA alone. Here however, the claimed mark in question is not SCUBA or SCUBA DIVING but <scuba.biz>. This combination of generic words is not well suited to function as a trade or service mark indicating a single source of goods or services and is more likely to be taken as a domain name. Domain names are not necessarily also trademarks. Before it could be accepted that this combination of words (together with the full stop) had acquired distinctiveness in relation to the goods or services of Complainant, compelling evidence to that effect must be provided.
Under the UDRP it has been held that there are no rights conferred by an application to register a trademark. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. The same has been held under the STOP. See Netdoktor AS v. Jens Nielsen, WIPO Case No. DBIZ2002-00109; Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-00130 and Jones Holding Limited v. Vitty Inc.,WIPO Case No. DBIZ2002-00265.
Here Complainant applied in March 2001, to register the mark SCUBA.BIZ in the USPTO Supplemental Register, which is for descriptive marks for which secondary meaning has not been proven: Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153. So not only does the mere application to register give rise to no rights, the fact that registration is sought in the Supplemental Register is evidence that there were no rights at common law at the time of the application. Complainantís evidence of use of the words SCUBA.BIZtm on his website (even accepting the date of first use as March 18, 2001) is insufficient to establish distinctiveness.
Accordingly, Complainant has failed to establish rights in a trade or service mark corresponding to the disputed domain name.
There being no other IP claimants, it is unnecessary to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Having regard to the Panelís finding that the Complainant has failed to establish rights in a trade or service mark, it is inappropriate to consider this issue.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Alan L. Limbury
Dated: July 27, 2002