TM Acquisition Corp. v. International
Newcastle
Claim Number: FA0204000110760
Complainant
is TM Acquisition Corp., Parsippany,
NJ, (“Complainant”) represented by Kathryn
S. Geib. Respondent is International
Newcastle, Miami, FL, (“Respondent”).
The
domain name at issue is <era.biz>,
registered with IHoldings Inc. d/b/a Dotregistrar.com.
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 19, 2002; the Forum
received a hard copy of the Complaint on April 22, 2002.
On
April 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 13,
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 28, 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. Respondent’s <era.biz> domain
name is identical to Complainant’s ERA mark.
2. Respondent has no rights or legitimate
interests in the <era.biz> domain name.
3. Respondent registered the <era.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of numerous ERA
marks registered with the U.S. Patent & Trademark Office (U.S. Reg. Nos.
1,003,531 and 1,057,923), and has licensed the ERA marks to ERA Franchise
Systems, Inc. Through Complainant’s licensing agreement, ERA Franchise Systems
has the right to use the two registrations of the ERA mark. An additional
twenty-eight registrations and eight pending applications contain the ERA mark
as an element of a mark and/or design. ERA Franchise Systems is the owner of
trademark registrations for numerous ERA marks in sixty-six additional
countries. ERA Franchise Systems has used the ERA marks in the U.S.
continuously in connection with the offering of real estate brokerage services
since October 1971. Over the past thirty-one years, ERA Franchise Systems has
expended many millions of dollars and significant time, resources and effort in
advertising, promoting and establishing the goodwill of the ERA marks in
association with its business. As a result, the ERA marks are distinctive. ERA
Franchise Systems also operates its principal website at <era.com>.
Respondent registered the disputed domain
name on March 27, 2002 and is not a franchisee or a licensee of Complainant.
Respondent is not authorized to use the ERA mark in any manner nor was it
authorized to apply for the domain name in question. Respondent’s listed
address on the WhoIs database is “FOR SALE at DomainCollection.com.”
Complainant’s investigation has not found any business connection between
Respondent and the registration of the contested domain name.
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.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no 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 Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademarks in the United States. Respondent has not come forward to
proffer any evidence that it has rights in the ERA mark anywhere in the world.
Complainant’s investigation and search of the U.S. Patent & Trademark
Office’s online database revealed that Respondent has no applications or
registrations on file for the ERA mark. Therefore, Respondent has no rights or
legitimate interests in the <era.biz> domain name pursuant to STOP
Policy ¶ 4(c)(i).
It can be inferred that Respondent’s
planned use of the domain name identical to Complainant’s mark would be to
divert Internet users interested in Complainant’s services to Respondent’s
website. 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’s registration of an infringing domain name in order to
opportunistically trade on the goodwill of Complainant’s mark does not
constitute a bona fide offering of goods or services under STOP Policy ¶
4(c)(ii). See 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)”); see also
William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum
Mar. 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)). Also, Respondent has
not prepared to use the ERA mark in any bona fide business offering, nor has
Respondent utilized the mark in the past. Failure to provide evidential
confirmation as to the use of the disputed domain name leads to the inference
that one does not exist. See Gene Logic Inc. v. Bock, FA 103042
(Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or
legitimate interests in the disputed domain name Respondent must establish with
valid evidence “a course of business under the name, or at least significant
preparation for use of the name prior to learning of the possibility of a
conflict” with an IP Claimant).
There is no evidence on the record and
Respondent has not come forward to establish that it is commonly known by the <era.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to
this Panel as International Newcastle. 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).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent’s primary purpose in
registering the domain name was to strategically use it as leverage for
coercing Complainant into purchasing the contested domain name. Respondent
freely admits its bad faith intentions on the WhoIs information page by placing
the words “FOR SALE at DomainCollection.com” in the line provided for
Registrant’s billing address. Respondent has not yet had the opportunity to
offer the domain name for sale since the STOP procedure has precluded the full
benefits of ownership. Respondent’s actions evidence an intent to register the
disputed domain name primarily for the purpose of selling or transferring the
name to Complainant for valuable consideration, thereby satisfying STOP Policy
¶ 4(b)(i) requirements. See American Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”);
see also Wembley Nat’l Stadium
Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based
on the apparent willingness of the Respondent to sell the domain name in issue
from the outset, albeit not at a price reflecting only the costs of registering
and maintaining the name).
Respondent registered the domain name
for the purpose of preventing Complainant from registering its ERA mark in a
corresponding domain name, fulfilling STOP Policy ¶ 4(b)(ii) requirements.
Respondent had constructive notice of the ERA mark when it purchased the domain
name by virtue of the STOP registration procedure, numerous trademark
registrations and fame of the ERA mark. Therefore, registration constituted bad
faith infringement of Complainant’s right to reflect its mark. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002) (finding that the unique nature of the STOP Policy and the notice given
to Respondent regarding existing IP Claims identical to its chosen domain name
precluded good faith registration of <genelogic.biz> when Respondent
registered it with “full knowledge that his intended business use of this
domain name was in direct conflict with a registered trademark of a known
competitor in exactly the same field of business”); see also 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); see also Toyota Jidosha Kabushiki Kaisha v. S&S
Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of
a domain name goes further than merely correctly using in an advertisement the
trademark of another in connection with that other’s goods or services: it
prevents the trademark owner from reflecting that mark in a corresponding
domain name”).
Furthermore, the <era.biz> domain
name is identical to Complainant’s ERA mark resulting in the likelihood that
Internet users will believe that there is some affiliation between Respondent
and Complainant; notwithstanding the fact that Respondent had no authorization
to make use of Complainant’s mark. Registration of the <era.biz> domain
name despite its being identical is evidence of bad faith pursuant to STOP
Policy ¶ 4(b)(iv) since
Respondent is attempting to ensnare Internet users seeking Complainant’s
website based on the goodwill associated with its famous mark. See Pillsbury
Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002)
(finding 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 would likely
cause confusion as to the affiliation between Respondent and 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).
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 <era.biz> be TRANSFERRED from
Respondent to Complainant and that subsequent challenges under the STOP Policy
against this domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated:
May 31, 2002
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