WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Argosy Gaming Company v. Argosy Publishing Inc.

Case No. DBIZ2001-00024

The Complainant is Argosy Gaming Company located in Alton, Illinois, USA. 

The Respondent is Argosy Publishing, Inc. located in Waltham, Massachusetts, USA.

The domain name at issue is: <argosy.biz> (the "Domain Name")

The registrar is Network Solutions, Inc.

The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with 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 received by the WIPO Arbitration and Mediation Center (the "Center") on December 7, 2001, and an amendment to the Complaint was received on December 12, 2001.

The Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to Respondent on January 15, 2002. On February 1, 2002, the Respondent filed a Response.

On February 19, 2002, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Single Panelist.

These factual findings are based on the submissions of the parties. In addition, the Panel has the ability under Paragraph 10 of the STOP Rules to consider publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response. In that regard, I have considered relevant web sites and U.S.P.T.O. records.

Complainant uses the mark ARGOSY in connection with casinos and gambling services. It is the owner of a federal registration for ARGOSY for casino gaming services, registered October 24, 1995. The filing date of the application was November 7, 1994. Complainant owns registrations for other marks containing the word ARGOSY for similar services. Complainant also operates a web site at "www.argosycasinos.com."

Respondent is engaged in the publishing business. It has used the name "Argosy" since 1996, and the name "Argosy Publishing" since 1998. It operates a web site at "www.argosypublishing.com". It registered the Domain Name on November 19, 2001.

The Complainant contends that the Domain Name is identical to its mark, that Respondent's use of the Domain Name threatens to create confusion with its prior use of ARGOSY, and that the domain name was registered or used in bad faith.

Respondent contends that it registered the Domain Name in good faith based on its long standing use of ARGOSY in connection with publishing.

To prevail, Complainant must prove each of the following elements: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) the Respondent lacks any right or legitimate interest in the Domain Name; and (3) the Domain Name has been registered or used in bad faith. 

The dispute Domain Name is identical to a mark in which the Complainant has rights. The ".biz" gTLD is not a distinguishing feature.

Paragraph 4(c) of STOP indicates that a registrant may have rights or a legitimate interest in a disputed domain name if it was commonly known by the name prior to registration. Respondent here has demonstrated that it was known by the name ARGOSY prior to registration of the Domain Name.

Under Paragraph 4(c)(iii) of STOP, the Complainant must demonstrate that the Respondent registered or used the Domain Name in bad faith. It is clear from the record that Respondent has not yet used the Domain Name in any manner. Moreover, the record indicates that it Respondent registered the Domain Name in good faith based on its previous use of the ARGOSY name. It is also significant that the U.S.P.T.O. has allowed registrations of ARGOSY by various parties for a variety of goods and services, indicating that good faith coexistence is possible. There is no contrary evidence to show that Respondent registered the Domain Name in bad faith.

The mere fact that Complainant owns a prior federal registration for the ARGOSY mark is not sufficient in itself to merit relief. Similarly, the mere fact that Respondent's registration of the Domain Name prevents Complainant from having the same domain name is not sufficient for relief. It does not appear that the Domain Name was registered for that purpose. Instead, it appears that the Domain Name was registered for use in a well-established, unrelated business in which Complainant has no rights.

Complainant has failed to prove that Respondent lacks any right or legitimate interest in the Domain Name or that the Domain Name has been registered or used in bad faith. Therefore, I find in favor of Respondent.