Normark Corporation v. Introite ltd
Claim Number: FA0112000103061
The Complainant is Naomi Dwyer Normark Corporation, Minnetonka, MN (“Complainant”) represented by Travis L Bachman Esq., of Dorsey & Whitney Llp. The Respondent is Introite Ltd, Stockholm, SWEDEN (“Respondent”).
The domain name at issue is <rapala.biz>, registered with eNom.
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 14, 2001.
On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 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 a late Response from Respondent on January 17, 2002, 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 29, 2002 pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin 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.
Complainant has rights to its RAPALA trademark.
Respondent does not have rights or legitimate interests in the <rapala.biz> domain name.
Respondent registered <rapala.biz> in bad faith.
Respondent failed to submit a timely Response.
Complainant registered its RAPALA trademark (Reg. No. 755, 400) on the Principal Register of the United States Patent and Trademark Office on August 27, 1963 in addition to several other RAPALA registrations by its parent company in Canada, Sweden, Norway, Denmark, and France among others. All of the above trademarks are registered in relation to fishing tackle, knives, clothing, and other outdoor products.
Complainant’s RAPALA products are sold in more than 140 countries and its estimated to have a 50% market share in Europe and 30% market share in the United States, making it the world’s leading maker of hard-bodied fishing lures.
Complainant has spent more than 30 million dollars on advertising its brand and has sold more than 600 million dollars worth of RAPALA branded products over the last 20 years.
Complainant has expanded its goodwill associated with RAPALA products to the Internet through its <rapala.com>, <rapala.org>, <rapalanormarkusa.com>, <rapalausa.com>, and <rapalacollectibles.com> domain names.
Respondent registered the disputed domain name November 19, 2001. Respondent’s trade name is Introite Ltd.
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 demonstrated rights in the RAPALA mark through its registration with the United States Patent and Trademark Office as well as its widespread use of the name in commerce. The <rapala.biz> domain name is identical to Complainant’s RAPALA trademark.
The Panel finds that STOP ¶ 4(a)(i) has been satisfied.
The Panel is allowed to determine Respondent does not have rights or legitimate interests in the disputed domain name because Respondent has failed to provide a Response to this claim. 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).
Respondent has not provided any evidence that it owns any service or trademarks identical to the domain name, or that it has common law rights in the RAPALA name. As a result, Respondent has not demonstrated any rights or legitimate interests in the <rapala.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).
It can be inferred that Respondent’s intended use of a domain name identical to Complainant’s famous trademark is to lure consumers, relying on the goodwill of Complainant’s name, to Respondent’s website for its own commercial gain. This activity indicates Respondent is not making a bona fide offering of goods, and therefore, does not have rights or legitimate interests in the disputed domain name 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).
Respondent has not offered evidence that it is known as anything other than its Introit trade name. As a result, the Panel may conclude that Respondent is not commonly known by <rapala.biz> and does not have rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(iii). See 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use). Moreover, given the global fame of Complainant’s RAPALA mark, Respondent should be presumed not to be commonly known by the RAPALA name or a domain identical to RAPALA. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
The notoriety of Complainant’s RAPALA mark combined with Respondent’s lack of connection with Complainant or its business and Respondent’s use of Complainant’s famous name in its entirety all suggest opportunistic bad faith on the part of Respondent. See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”); see also Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”).
Moreover, it can be inferred that Respondent registered the disputed domain name, identical to Complainant’s mark, to prevent Complainant from reflecting its trademark in a corresponding domain name. This activity indicates 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”).
Finally, Respondent or its authorized representative would have been forced to acknowledge Complainant’s exclusive rights in the RAPALA mark as part of the <rapala.biz> registration process. Therefore, Respondent is presumed to have actual or constructive knowledge of Complainant’s exclusive rights in the RAPALA mark at the time of registration; this is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(i). See The Prudential Ins. Co. v. Bixga Co., Ltd., FA 95487 (Nat. Arb. Forum Oct. 6, 2000) (finding bad faith registration and use where Respondent knew or should have known of Complainant’s marks prior to registration of the domain name “theprudential.com).
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 <rapala.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: February 11, 2002
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