American Christian Tours, Inc. v. Vitty,
Inc.
Claim Number: FA0204000109523
The
Complainant is American Christian Tours,
Inc., Rice Lake, WI, USA (“Complainant”).
The Respondent is Vitty, Inc.,
Taipei, TAIWAN (“Respondent”).
The
domain name at issue is <acts.biz>,
registered with 007 Names, 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.
James
Alan Crary 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 April 11, 2002; the Forum
received a hard copy of the Complaint on April 15, 2002.
On
April 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 15,
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 May 29, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James Alan Crary
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
<acts.biz> domain name is identical to Complainant's ACTS mark.
Respondent
has no rights or legitimate interests in the <acts.biz> domain
name.
Respondent
registered the <acts.biz> domain name in bad faith.
B.
Respondent
No
Response was received.
Complainant registered its ACTS mark on
the Principal Register of the United States Patent and Trademark Office on January
28, 1997 as Registration Number 2,033,756.
Complainant has used the mark since 1984.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
commonly known as “Vitty Inc.”
Respondent is engaged in DSL and world wide web hosting services.
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 to the ACTS mark because it has registered
the mark on the Principal Register of the United States Patent and Trademark
Office as Registration Number 2,033,756.
The <acts.biz> domain name is identical to Complainant’s
ACTS 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 1984, and has registered the mark on the Principal Register of the United
States. Respondent has not come forward
to offer evidence that it has used the ACTS 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 <acts.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).
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 <acts.biz> domain name is
identical to Complainant's ACTS 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 William L. Lyon & Assocs., Inc. v. Yata, FA 103043
(Nat. Arb. Forum March 21, 2002) (finding
the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence on the record, and
Respondent has not come forward to establish that it is commonly known by the
<acts.biz> domain name 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 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 finds that STOP Policy ¶
4(a)(ii) has been satisfied.
The
<acts.biz> domain name is identical to Complainant's ACTS mark and
the Internet user will likely believe that there is an affiliation between
Respondent and Complainant.
Registration of the <acts.biz> domain name, despite it
being identical to Complainant’s mark, 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’”).
Complainant’s
ACTS mark is registered on the Principal Register of the United States. Respondent’s company does business within
the United States. Therefore,
Respondent had constructive knowledge of Complainant’s rights in the ACTS mark
when it registered <acts.biz>.
Furthermore, due to the unique nature of STOP Respondent received notice of Complainant’s rights to the
ACTS mark before it registered the <acts.biz> domain name,
therefore Respondent also had actual notice of Complainant’s rights when it
registered the domain name.
Respondent’s registration of <acts.biz> despite this notice
is evidence of bad faith registration. See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual
or constructive knowledge of commonly known mark at the time of registration); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
The
Panel finds that STOP Policy ¶
4(a)(iii) is 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 <acts.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
James Alan Crary, Panelist
Dated: June 4, 2002
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