Eurosat Distribution Limited v. DOTSERV
Claim Number: FA0204000109700
The
Complainant is Eurosat Distribution
Limited, London, [UNITED KINGDOM] (“Complainant”) represented by Sarah Woolway, of Morgan Cole. The
Respondent is DOTSERV, Naestved,
[DENMARK] (“Respondent”).
The
domain name at issue is <eurosat.biz>,
registered with Network Solutions.
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 April 12, 2002; the Forum
received a hard copy of the Complaint on April 15, 2002.
On
April 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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 21, 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.
A. Complainant
1. The <eurosat.biz> domain
name is identical to Complainant’s EUROSAT mark.
2. Respondent has no rights or legitimate
interests in the <eurosat.biz> domain name.
3. Respondent registered the <eurosat.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant registered the EUROSAT mark,
UK 2017928, in the United Kingdom on April 19, 1995. Complainant uses the
EUROSAT mark for satellite receivers, parts and fittings.
Respondent,
known as DOTSERV, registered the disputed domain name on March 27, 2002.
Complainant’s investigation has not found any trademark or service marks owned
by Respondent for EUROSAT.
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.
The
<eurosat.biz> domain name is identical to Complainant’s EUROSAT
mark in spelling, form and pronunciation. As stated, Respondent’s contested domain
name is identical to Complainant’s mark since gTLDs are irrelevant in making
the determination of whether the contested domain is identical to the
Complainant’s mark. See Princeton Linear Assoc., Inc. v. Copland
o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding
that the <.biz> gTLD in the disputed domain name is not a factor and
hence to be ignored, in determining whether a disputed domain name is identical
to the mark in which Complainant asserts rights).
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 no rights or legitimate interests in the disputed domain name. See
Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat.
Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come
forward with a Response, the Panel could infer that it had no trademark or
service marks identical to <grammy.biz> and therefore had no rights or
legitimate interests in the domain name).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of the Complainant. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000)
(finding that absent evidence of preparation to use the domain name for a
legitimate purpose, the burden of proof lies with the Respondent to demonstrate
that it has rights or legitimate interests).
Complainant
has established that it has rights in the disputed domain name because it is
the owner of a registered trademark incorporating the work EUROSAT. Respondent
has not come forward to offer evidence that it has common law rights in the
mark EUROSAT or owns any registered trademarks or service marks incorporating
the mark. Therefore, Respondent has not demonstrated any rights or legitimate
interests in the <eurosat.biz> domain name pursuant to STOP Policy
¶ 4(c)(i). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondent’s failure to respond can be construed as an admission that they
have no legitimate interest in the domain names); 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).
Based
on Complainant’s continuous use of the EUROSAT mark, any planned use by
Respondent of the <eurosat.biz> domain name, identical to
Complainant’s famous mark, would represent a deliberate attempt to deceptively
attract customers via Complainant’s mark. Therefore, Respondent’s use is not
considered a bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii). 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 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)).
Complainant
has provided evidence that Respondent is commonly known as DOTSERV. There is no
evidence on the record, and Respondent has not come forward to establish that
it is commonly known by the <eurosat.biz> domain name pursuant to
STOP Policy ¶ 4(c)(iii). Therefore the Respondent has not demonstrated rights
or legitimate interests in the disputed domain name.
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
It
can be inferred that Respondent registered the disputed domain name in order to
intentionally attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s EUROSAT mark. This
registration is in violation of STOP Policy ¶ 4(b)(iv). The contested <eurosat.biz>
domain name is identical to Complainant’s EUROSAT mark and Internet users will
likely believe there is an affiliation between Respondent’s site and
Complainant; thus, evidence of bad faith exists. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding 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 State Fair
of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where the Respondent registered the domain name
<bigtex.net> to infringe on the Complainant’s goodwill and attract
Internet users to the Respondent’s website).
Because
of the famous and distinctive nature of Complainant’s EUROSAT mark, Respondent
is thought to have been on notice of the existence of Complainant’s mark at the
time Respondent registered the infringing <eurosat.biz> domain
name. Registration of a domain name incorporating the entirety of another’s
mark with knowledge that the domain name is infringing is evidence of bad
faith. 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 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’”).
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 <eurosat.biz> be TRANSFERRED
from Respondent to Complainant and subsequent challenges under the STOP
Policy against this domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated: June 3, 2002
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