Media General Communications, Inc. v. JV Ripley
Claim Number: FA0112000103037
The Complainant is Media General Communications, Inc., Richmond, VA (“Complainant”) represented by Andrew C. Carington. The Respondent is JV Ripley, Anchorage, AK (“Respondent”).
The domain name at issue is <virginiabusiness.biz>, registered with eNom, 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 14, 2001; the Forum received a hard copy of the Complaint on December 18, 2001.
On January 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 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 11, 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.
The disputed domain name <virginiabusiness.biz> is identical to Complainant’s registered VIRGINIA BUSINESS mark.
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 VIRGINIA BUSINESS trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,729,312 on November 3, 1992. Complainant has continuously used the mark in commerce in association with finance and business periodical magazines since February 1986.
Respondent registered the disputed 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 VIRGINIA BUSINESS mark through registration with the U.S. Patent and Trademark Office. The mark is identical to the disputed domain name. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights and legitimate interests in the VIRGINIA BUSINESS mark. Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name within the meaning of Policy ¶ 4(a)(ii). 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 not offered any evidence that it holds trademark rights in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i) or to suggest it intends to use the disputed domain name for a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). 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, there is no evidence Respondent is commonly known by the name <virginiabusiness.biz> pursuant to Policy ¶ 4(c)(iii); Respondent is only known to this Panel as JV Ripley. 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).
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.
Because Complainant registered the VIRGINIA BUSINESS mark in 1992 and has continuously used it since at least 1986, Respondent may be considered to have been on notice as to Complainant’s rights in its mark. See Gehl Co. v. Gehl, FA 102816 (Nat. Arb. Forum Jan. 30, 2002) (finding that the “long standing use and historic nature” of the Complainant’s GEHL mark put the Respondent on notice as to the existence of the mark, thereby making Respondent aware that it was infringing upon Complainant’s rights); see also 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).
Given Respondent’s actual or constructive knowledge of Complainant’s VIRGINIA BUSINESS mark, its registration of a domain name that wholly incorporated and infringed upon that mark was in bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).
Further, in light of Respondent’s lack of rights or interests in the mark, it may be inferred that any future use of the disputed domain name by Respondent will cause confusion among Internet users, so that they may erroneously believe there is an affiliation between Respondent and Complainant. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant). This would demonstrate bad faith under STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding that registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name will likely cause confusion as to the affiliation between Respondent and Complainant).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that the relief should be hereby granted.
Accordingly, it is Ordered that the <virginiabusiness.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy shall not be permitted.
Sandra Franklin, Panelist
Dated: February 20, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page