WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W. R. Grace & Co. –Conn. v. Ross LeBel d/b/a CyberVision Network
Case No. DBIZ2002-00200
1. The Parties
The Claimant is W.R. Grace & Co.-Conn., a corporation organized and existing under the laws of Connecticut, having its principal place of business at 7500 Grace Drive, Columbia, Maryland, United States of America.
The Respondent is Ross LeBel, an individual doing business as CyberVision Network, a sole proprietorship registered under the laws of British Columbia, Canada, having an address at PMB 330-739, 1733 H Street, Blaine, Washington, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <grace.biz>, which domain name is registered with Blueberry Hill Communications, Inc. d/b/a Bluehill.com, having its principal place of business at Palm Desert, California ("Bluehill.com").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center (" the Center") on April 28, 2002, in electronic format and on May 2, 2002, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property ("IP") Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The Center transmitted an Acknowledgement of Receipt of Complaint on May 10, 2002.
The Center verified that the Complaint satisfied the formal Requirements of the STOP, the STOP Rules, and the WIPO Supplemental STOP Rules. The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on June 6, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, Bluehill.com, and ICANN), setting a deadline of June 26, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Whobiz records. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, Respondent acknowledges having received actual notice by filing a Response.
On June 7, 2002, the Center received in electronic format and on June 14, 2002, in hardcopy, a Response. On June 14, 2002, the Center transmitted its Acknowledgement of Receipt (Response) to the parties.
On June 19, 2002, Complainant filed a Request for Supplemental Filing by email and Respondent filed a Response to Complainant's Request for Supplemental Filing by email.
On July 5, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the Center appointed Mr. M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant was founded in 1854 and is the holder of approximately 200 trademark and service mark applications and registrations for the GRACE mark. Complainant's first trademark for GRACE dates to 1962. Complaint, Annex C.
Complainant uses the mark in conjunction with various products and services, including travel services, tote bags and travel bags, educational services, Christmas ornaments, golf products, and chemical products among others.
The Panel performed a Whois search on the domain name <wrgrace.biz> and found that it was registered by Complainant on November 15, 2001.
Respondent is not licensed to use Complainant's trademarks, nor is there any other relationship between the parties that would entitle Respondent to use the mark.
Respondent set up CyberVision Network as a Canadian sole proprietorship in 1996. CyberVision Network is a business that "offers Internet services, including without limitation, web hosting services for others on shared servers and dedicated servers, domain name registrations, Internet connections, Internet and Intranet solutions, networks and networking services, and sales and marketing services, among others. Complaint, Annex 2.
Respondent registered the domain name at issue on March 27, 2002. Respondent states that he registered the name with the intent of offering Internet related services to Christian and Christian related organizations. Respondent claims that he has a right to use the term "grace" "in its strictly descriptive sense for private label Internet web services to those who share [Respondent's] faith and spiritual beliefs.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical to Complainant's GRACE mark. Complainant contends that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered the domain name at issue in bad faith.
Respondent admits that the domain name is similar to the domain name in question. However Respondent argues that the mark is weak because it is in common use by many sellers in the market, and it should be entitled to only a very narrow scope of protection. Respondent contends that because the term GRACE is incorporated in over 100 marks in the State of California alone, that Complainant cannot claim exclusive rights to use the mark in a domain name. Respondent contends that the widespread use of the mark indicates that it is merely descriptive. Respondent argues that he has a legitimate interest in the use of the "grace" name, because he registered it in connection with the bona fide offering of goods and services, and because Respondent did not register the domain name at issue for an improper purpose. Respondent contends that the term is both generic and descriptive and therefore is not subject to challenge under the STOP Policy.
6. Request For Supplemental Filings
Complainant has requested that the Panel receive a Supplemental filing in this matter. Respondent opposes the filing on the basis that Complainant could have included the new matter in its original filing as it made no showing that such matter was unavailable at that time. The Panel has determined that it will accept such filing.
Complainant performed a Whois search that showed that Respondent had registered 250 domain names including <hustler.biz>, <softporn.biz>, <exoticdancer.biz>, and <escortservice.biz>. Complainant implied strongly that no devout Christian would register such terms as domain names.
Complainant also noted that Respondent registered such names as <tvguide.biz>, <genetech.biz>, <smartmoney.biz>, <delta.biz>, <comedyclub.biz>, <marines.biz>, <utah.biz>, <newportbeach.biz>, <kennedy.biz>, <george.biz>, <john.biz>, <gary.biz>, <rob.biz>, and at least fourteen other common first names as SLDs.
7. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered in an IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant's Rights in the Mark
Complainant has rights in the mark GRACE as demonstrated by its registered trademarks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Respondent asserts that he has rights or legitimate interests in respect of the domain name at issue since it is his intent to use the name in the legitimate business of selling network services to Christian-affiliated religious and educational institutions. Complainant contends that this is a ruse, and that Respondent's registration of 275 other domain names shows this. Moreover, Complainant asserts that no sincere practitioner of the Christian religious faith would register domain names that are identified with pornography and/or prostitution.
The Panel rejects the contention that the registration of any number of additional domain names precludes a party from having rights or legitimate interests in one specific domain name. The Panel also believes that a belief in Christianity does not require that one turn away from human sexuality in all of its manifestations.
Respondent, however, is required to show "demonstrable preparations to use," not mere statements of intent to use(STOP Policy, ¶ 4(c)(ii)). This Respondent has failed to do. Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. Amana Company, L.P. v. Vanilla Limited, WIPO Case No. D2001-0749.
Bad Faith Registration or Bad Faith Use
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Here, as in most cases likely to be brought under the STOP Policy, there has been no use.
The term "grace" is not only a descriptive term, but is also a common female first name. The registration of common names and descriptive terms is not bad faith registration. Even if done with the intent to use or sell the names, there is no bad faith in such conduct. The owner of a trademark or service mark cannot lay claim to common names or descriptive terms as against all others. See, e.g., EAuto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104; LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186; The Historical Research Center International Inc. v. artrampage.com, NAF Case No. FA11072.
Moreover, more than four months prior to the registration of the domain name at issue, Complainant registered its corporate name in the .biz gTLD, in the form <wrgrace.biz>. Thus, Complainant is hardly disadvantaged by this ruling.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the domain name. However, the Complainant has failed to prove that Respondent has registered or used the domain name in bad faith. Accordingly, the Complaint is dismissed.
M. Scott Donahey
Dated: July 12, 2002