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national arbitration forum

 

DECISION

 

Specialty Retailers, Inc. v.
Frank L Rasky

Claim Number: FA1203001434227

 

PARTIES

Complainant
is Specialty Retailers, Inc. (“Complainant”), represented by Ryan L.
Lobato
of McAfee & Taft A Professional Corporation, Oklahoma,
USA. Respondent is Frank L Rasky (“Respondent”), represented by Ari
Goldberger
of ESQwire.com Law Firm, New Jersey, USA.

 

REGISTRAR
AND DISPUTED DOMAIN NAME

The
domain name at issue is <stage.com>, registered with Network
Solutions, LLC
.

 

PANEL

The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge has no known conflict in serving as Panelists in
this proceeding.

 

Flip
Petillion, the Hon. Charles K. McCotter, Jr. and the Hon. Neil Brown QC as
Panelists.

 

PROCEDURAL
HISTORY

Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
12, 2012; the National Arbitration Forum received payment on March 12, 2012
.

 

On
March 13, 2012, Network Solutions, LLC confirmed by e-mail to the National
Arbitration Forum that the <stage.com> domain name is registered
with Network Solutions, LLC and that Respondent is the current registrant of
the name. Network Solutions, LLC has verified that Respondent is bound by the Network
Solutions, LLC registration agreement and has thereby agreed to resolve domain
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).

 

On
March 14, 2012, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of April 3, 2012 by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@stage.com. Also on March 14, 2012, the
Written Notice of the Complaint, notifying Respondent of the e-mail addresses
served and the deadline for a Response, was transmitted to Respondent via post
and fax, to all entities and persons listed on Respondent’s registration as
technical, administrative and billing contacts.

 

A
timely Response was received and determined to be complete on April 3, 2012.

 

Complainant’s
Additional Submission was received on April 7, 2012 and was deemed to be in
compliance with Supplemental Rule 7.

 

Respondent’s
Additional Submission was received on April 16, 2012 and was deemed to be in
compliance with Supplemental Rule 7.

 

On
April 18, 2012, pursuant to Respondent’s request to have the dispute decided by
a three-member Panel, the National Arbitration Forum appointed Flip Petillion, the
Hon Charles K. McCotter, Jr. and the Hon. Neil Brown QC as Panelists.

 

Having
reviewed the communications records, the Administrative Panel (the
“Panel”) finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) “to employ reasonably
available means calculated to achieve actual notice to Respondent” through
submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant
requests that the domain name be
transferred from Respondent
to Complainant.

 

PARTIES’
CONTENTIONS

A.
Complainant

1.
Complainant
has used the STAGE mark in commerce since 1969 and has acquired a trademark
registration with the United States Patent and Trademark Office
(“USPTO”) for the mark (Reg. No. 1,525,762 registered February 21,
1989).

2.
Complainant
uses the STAGE mark in connection with retail store services in the field of
clothing, shoes, and accessories.

3.
Respondent’s
<stage.com> domain name is identical to the STAGE mark.

4.
Respondent has used the domain name to display a parked
website filled with pay-per-click links to Complainant and its competitors.

5.
Respondent attempted to sell the domain name for a price
between $300,000 and $500,000 through an unsolicited e-mail to Complainant.

 

B.
Respondent

1.
Respondent registered the disputed domain name on June
4, 1997 because it is a generic word.

2.
Complainant does not have exclusive rights to the common
word “stage.”

3.
Respondent’s domain name matches Respondent’s own
documented professional and personal interest in theater and television
productions.

4.
Respondent has always used the disputed domain name in
connection with a bona fide offering of goods and services.

5.
Respondent has been a resident of Canada for over 50
years and had no knowledge of Complainant, who is a Texas based retailer.

6.
Complainant cannot establish that Respondent registered
the domain name with the intent to sell it to Complainant, to disrupt
Complainant’s business, to prevent it from registering a domain name reflecting
its more or to confuse Internet users.

7.
Complainant has waited 15 years to bring this claim
without merit; thereby supporting a finding of reverse domain name hijacking.

 

C. Complainant’s Additional Submission

1.
The domain name at issue is identical to Complainant’s
mark.

2.
Respondent is not and has never been commonly known by
the disputed domain name.

3.
Respondent registered the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration for valuable consideration.

4.
Prior to the filing of this proceeding the disputed
domain name contained links to Complainant and Complainant’s competitors
resulting in profit to Respondent.

5.
Complainant did not initiate the discussion regarding
the sale of the disputed domain name; Respondent approached Complainant
offering to sell the domain name for $300,000-$500,000.

6.
The Doctrine of Laches should not apply to these
proceedings.

7.
Reverse domain name hijacking is not warranted here.

 

D.
Respondent’s Additional Submission

1.
Complainant
is attempting to bully Respondent in to transferring the disputed domain name.

2.
Complainant
failed to present any evidence that it had any presence in Canada in 1997.

3.
Registering
a domain name because of its value as a common word and using the domain name
in connection with the common meaning of the word is a legitimate use.

4.
Offering
to sell a descriptive term domain name is not evidence of bad faith
registration or use.

5.
All of
the hyperlinks found on the resolving website relate to the term “stage.”

 

FINDINGS

Complainant,
Specialty Retailers, Inc., is active in the retail business. Complainant has
used the STAGE mark in commerce and in connection with retail store services,
since 1969 and has acquired a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the mark (Reg. No.
1,525,762 registered February 21, 1989).

 

Respondent, a Canadian resident, registered the disputed
domain name on June 4, 1997. Respondent has only made a limited use of the
disputed domain name and currently uses the disputed domain name for
pay-per-click advertising. In 2012, Respondent’s representative has approached
many companies, including Complainant, regarding their potential interest in
purchasing the disputed domain name.

 

DISCUSSION

Paragraph
15(a) of the Rules instructs this Panel 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 Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:

 

(1)
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and

(2)
Respondent
has no rights or legitimate interests in respect of the domain name; and

(3)
the
domain name has been registered and is being used in bad faith.

 

The
Panel will therefore deal with each of these requirements in turn.

 

Identical
and/or Confusingly Similar

 

Complainant
argues that it has established rights in the STAGE mark through its trademark
registration with the USPTO
(Reg.
No. 1,525,762 registered February 21, 1989). The Panel agrees and finds
accordingly under Policy ¶ 4(a)(i) that Complainant has established rights in
the STAGE mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO,
[the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft
Corp. v. Burkes
, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant,
in its Complaint and Additional Submission, argues that the <stage.com> domain name is identical to the STAGE mark. The
Panel notes that Respondent does not dispute this assertion. Therefore, the
Panel finds that the disputed domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus.
Sales Corp.
, FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s
<treeforms.com> domain name is identical to the complainant’s TREEFORMS
mark).

 

Rights or
Legitimate Interests

 

Given
the Panel’s decision about the absence of bad faith at the time of
registration, there is no need for the Panel to decide on the existence of
rights or legitimate interests in the disputed domain name, as all three
elements must be proven to obtain an order to have the domain name cancelled or
transferred.

 

Registration
and Use in Bad Faith

 

The
Panel finds that Complainant failed to meet the burden of proof of bad faith
registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels &
Resorts Worldwide, Inc. v. Samjo CellTech.Ltd
, FA 406512 (Nat. Arb. Forum
Mar. 9, 2005) (finding that the complainant failed to establish that the
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co.,
FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of
bad faith without supporting facts or specific examples do not supply a
sufficient basis upon which the panel may conclude that the respondent acted in
bad faith).

 

Respondent
contends that the <stage.com> domain name is comprised entirely of a
common term that has many meanings apart from use in Complainant’s STAGE mark.
Moreover, Respondent contends that the registration and use of domain name
comprising such a common term is not necessarily done in bad faith. The Panel
finds that a respondent is free to register a domain name
consisting of common terms and that the domain name currently in dispute
contains such common term. For multiple years, Respondent did not use the
disputed domain name in a way that was considered a violation of Complainant’s
trademarks and Complainant itself is of the opinion that it had no indication
of Registrant’s alleged subjective intent at the time of registration.

 

Respondent
has recently offered to sell the disputed domain name to at least 10 parties
for an amount vastly exceeding Respondent’s documented out-of-pocket costs directly
relating to the disputed domain name. However, the Panel is of the opinion that
there are no other circumstances indicating that the disputed domain name was
registered primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of the Complainant.
According to the Panel, there are no indications that the Respondent targeted
the Complainant, a trademark or service mark holder or any of their respective
competitors when, in 1997, registering the disputed domain name, consisting of
a dictionary word. Therefore, the Panel is of the opinion that it is not
evidenced that Respondent registered the disputed domain name in bad faith. See
Zero
Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000)
(“Common words and descriptive terms are legitimately subject to registration
as domain names on a ‘first-come, first-served’ basis.”); see
also Target Brands, Inc. v. Eastwind Group,
FA 267475 (Nat. Arb. Forum
July 9, 2004) (holding that the respondent’s registration and use of the
<target.org> domain name was not in bad faith because the complainant’s
TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA
192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was
using the <highlife.com> domain name, a generic phrase, in connection with
a search engine, the respondent did not register and was not using the disputed
domain name in bad faith).

 

As
the requirement of bad faith registration and use is a conjunctive requirement
and since no bad faith registration is established, the Panel is of the opinion
that there is no need to decide about the bad faith use of the domain name.

 

Reverse
Domain Name Hijacking

 

Respondent
has mentioned the possibility of finding reverse domain name hijacking in the
instant case on the part of Complainant. In this regard, the Panel finds no
evidence that the Complainant had lodged a vexatious action and accordingly
rules out such possibility.

 

DECISION

Having
not established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.

 

Accordingly,
it is Ordered that the <stage.com> domain name REMAIN WITH
Respondent.

 

 

Flip Petillion, Panelist

Hon. Charles K. McCotter,
Jr., Panelist

Hon. Neil Brown QC,
Panelist

Dated: May 14, 2012

Source: World Intellectual Property Organization (WIPO) and National Arbitration Forums (NAF)

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