International Flavors & Fragrances v. CIFS
Claim Number: FA0112000102813
The Complainant is International Flavors & Fragrances, Union Beach, NJ (“Complainant”). The Respondent is CIFS, Copenhagen, DENMARK (“Respondent”).
The domain name at issue is <iff.biz>, registered with Speednames Inc.
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.
John J. Upchurch 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 11, 2001; the Forum received a hard copy of the Complaint on December 12, 2001.
On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2001 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 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch 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 <iff.biz> domain name is identical to Complainant's IFF mark.
Respondent has no rights or legitimate interests in the <iff.biz> domain name.
Respondent registered the <iff.biz> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
Since 1964, Complainant has been conducting business under the name International Flavors & Fragrances Inc. Complainant has used the trademark IFF since that time and first registered three variations of the trademark in Denmark in 1964. Since that time Complainant has registered its trademark in over 150 countries for chemicals, perfumes and fragrances, air fresheners, meats and processed foods and staple foods. Complainant operates manufacturing facilities in various countries throughout the world including: Brazil, Mexico, Egypt, U.K, Spain, Holland, China, Japan, United States, and Chile.
Complainant operates a website at the domain <iff.com>, therefore when Internet users expect that domains including the IFF trademark will belong to the Complainant.
Respondent registered the disputed domain name on November 19, 2001. Respondent is not affiliated with Complainant. Respondent is known as Copenhagen Institute for Future Studies or CIFS. Respondent owns one trademark registration in Denmark for FREMTIDSSPILLET. There are no trademark registrations on record by Respondent for IFF.
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 IFF mark through its 150 trademark registrations in various countries. Furthermore, Complainant has used the IFF mark since 1964 in relation to its international flavor and fragrance business. The IFF mark is identical to the <iff.biz> domain name.
Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
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 IFF mark because it has used the mark in commerce since 1964, and it is the owner of 150 trademark registrations throughout the world. The first registrations of the IFF mark were in 1964 in Denmark. Respondent has not come forward to offer evidence that it has any rights in the IFF mark. Respondent it not listed in international trademark databases as owning any mark incorporating IFF. There is evidence of a single Danish trademark registration FREMTIDSSPILLET, but it has no resemblance to Complainant's IFF mark or the <iff.biz> domain name. Therefore Respondent has no rights or legitimate interests in the <iff.biz> domain name under to STOP Policy ¶ 4(c)(i).
Respondent is commonly known by Copenhagen Institute for Futures Studies and CIFS, not IFF. There is no evidence on record, and Respondent has not come forward to establish that it is commonly known by the <iff.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
If Respondent were to use the disputed domain name it could not do so without creating an impression that it was associated with Complainant, because the <iff.biz> domain name is identical to Complainant's IFF mark. The intended use of a domain name identical to Complainant's mark to mislead or confuse Internet users is not considered 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 finds that Policy ¶ 4(a)(ii) has been satisfied.
The <iff.biz> domain name is identical to Complainant's IFF mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <iff.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’”).
Based on the circumstances, it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its IFF mark in a corresponding domain name. This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii). See 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”).
The Panel finds that 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 <iff.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
John J. Upchurch, Panelist
Dated: January 22, 2002
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