Commonwealth
Bank Of Australia v. Praven Purohit
Claim Number: FA0112000102728
The Complainant is Commonwealth Bank Of Australia, Sydney, AUSTRALIA (“Complainant”) represented by Sharon Pollock. The Respondent is Praven Purohit, Framingham, MA, USA (“Respondent”).
The domain name at issue is <makeithappen.biz>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 5, 2001; the Forum received a hard copy of the Complaint on January 14, 2002.
On January 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
A. Complainant
The <makeithappen.biz> domain name is identical to Complainant's MAKE IT HAPPEN mark.
Respondent has no rights or legitimate interests in the <makeithappen.biz> domain name.
Respondent registered the <makeithappen.biz> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
Complainant has used the MAKE IT HAPPEN mark since July 1999 in relation to deposit and lending products, credit cards, school banking, sponsorship advertisements, supermarket banking, investment products, external recruitment advertisement and general corporate brand messages. Complainant registered the mark in Australia in 1999 (reg. No. 787857). Complainant also does business under the mark in Hong Kong, Tokyo, Singapore, United States, and London.
Respondent registered the disputed domain name on November 19, 2001. Complainant's investigation has not found any trademarks or service marks that belong to Respondent for the MAKE IT HAPPEN mark.
DISCUSSION
Paragraph
15(a) of the STOP 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
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; and
(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.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
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 an Intellectual Property (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 has established that it has rights in the MAKE IT HAPPEN mark because it has registered the mark in Australia (Reg. No. 787857), and used the mark continuously in commerce since 1999. The <makeithappen.biz> domain name is identical to Complainant's MAKE IT HAPPEN mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response and therefore it is
presumed that Respondent has not demonstrated rights or legitimate interests in
the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Complainant has established that it has rights in the disputed domain name because it has used the mark in commerce since 1999, and is the owner of a trademark in the Australia. Respondent has not come forward to offer evidence that it has used the MAKE IT HAPPEN mark in connection with its business, or that it owns any trademarks or service marks incorporating the word anywhere in the world. Therefore Respondent has not demonstrated any rights or legitimate interests in the <makeithappen.biz> domain name pursuant to STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
The <makeithappen.biz> domain name is identical to Complainant's mark and therefore there is a substantial possibility that Internet users will be confused if Respondent were to use the domain name. Because Respondent has no trademark or service mark rights in the MAKE IT HAPPEN mark, the registration and planned use of <makeithappen.biz> can be construed to be an opportunistic attempt to attract Complainant's customers to Respondent's website, and therefore, Respondent cannot be considered to be providing a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <makeithappen.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
The <makeithappen.biz> domain name is identical to Complainant's MAKE IT HAPPEN mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <makeithappen.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <makeithappen.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: February 25, 2002
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