Peachtree Software v. Kitt Scarponi
Claim Number: FA0112000102781
The Complainant is Peachtree Software, Norcross, GA (“Complainant”) represented by Louis T. Isaf. The Respondent is Kitt Scarponi, Brunswick , ME (“Respondent”).
The domain name at issue is <peachtree.biz>, registered with Tierra Net, Inc. dba Domain Discover.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin 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 via fax on December 7, 2001; the Forum received an electronic copy of the Complaint on December 8, 2001.
On December 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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 January 22, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin 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.
The disputed domain name <peachtree.biz> is identical to the PEACHTREE mark, a registered trademark in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant registered the PEACHTREE trademark on the Principal Register of the United States Patent and Trademark Office on August 2, 1983, as Registration No. 1,246,937 in connection with the production of computer software. Complainant has used the mark continuously in commerce since 1978 and holds at least three other registered marks in PEACHTREE.
Among the products and services Complainant provides, it uses the PEACHTREE mark in connection with the production and distribution of its accounting software. According to Complainant, Respondent admitted to being an accountant who used the PEACHTREE software. Respondent also reportedly indicated to Complainant that it intended to use the disputed domain name to promote its accountancy practice. Later, Respondent apparently informed Complainant that it was not an accountant, and that its intended use of the domain name would be unrelated to accountancy.
Respondent registered the <peachtree.biz> domain name on November 19, 2001.
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 its rights in the PEACHTREE mark through registration with the U.S. Patent and Trademark Office. The mark is identical to the disputed domain name. The Panel finds that STOP Policy ¶ 4(a) has been satisfied.
Complainant has demonstrated its rights to and interests in the PEACHTREE mark. Because Respondent has not submitted a Response in this matter, the Panel may properly presume it has no rights or 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 in a UDRP proceeding can be construed as an admission that they have no legitimate interest in the domain names).
Respondent has offered no evidence that it holds a trademark or service mark identical to the disputed domain name pursuant to STOP Policy ¶ 4(c)(i), nor that it has been commonly known by the domain name pursuant to STOP Policy ¶ 4(c)(iii). As such, the Panel finds that no such rights or legitimate interests exist. 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); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supported a finding for Complainant under the UDRP).
Further, by attempting to divert Complainant’s customers to Respondent’s own related but unauthorized website, it cannot be said that Respondent’s purported planned use of the domain would constitute a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
The Panel thus finds that STOP Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
As an accountant who purportedly admitted to using Complainant’s PEACHTREE software in its practice, Respondent was aware or should have been aware of the proprietary nature of Complainant’s marks. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark; thus, Respondent registered the domain name in bad faith).
The evidence offered by Complainant tends to indicate that, in registering the disputed domain name, Respondent intended to create a likelihood of confusion in order to divert Complainant’s customers to its own commercial site. This would demonstrate bad faith under Policy ¶ 4(b)(iv). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use). In the absence of a contrary claim by Respondent, the Panel finds that it may properly accept Complainant’s assertions as true. 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”).
Given Respondent’s knowledge of Complainant’s marks, it is reasonable to accept Complainant’s claim that the registration of the domain name was intended to prevent Complainant from reflecting its mark in a corresponding domain name. This demonstrates bad faith under STOP Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use under the UDRP 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 Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name [by Respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <peachtree.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 23, 2002
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