Enabler Informatica S.A. v. Stewart Fenn
Marketing Limited
Claim Number: FA0204000110774
Complainant
is Enabler Informatica S.A., Porto,
PORTUGAL (“Complainant”). Respondent is Stewart Fenn Marketing Limited,
Guildford, UNITED KINGDOM (“Respondent”).
The
domain name at issue is <enabler.biz>,
registered with Netbenefit d/b/a Netnames.
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.
Tyrus
R. Atkinson, Jr., 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 23, 2002; the Forum
received a hard copy of the Complaint on April 28, 2002.
On
June 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 1,
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 July 18, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., 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 <enabler.biz> domain
name is identical to Complainant’s registered ENABLER mark.
2. Respondent does not have any rights or
legitimate interests in respect of the <enabler.biz> domain name.
3. Respondent registered the <enabler.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant holds Portuguese Reg. No.
323,368 for the ENABLER mark registered on November 4, 1997. Complainant’s
registered ENABLER mark is the primary component of its trade name, “Enabler
Informatica S.A.”
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s investigation revealed that Respondent is
a marketing company and upon information and belief, asserts Respondent is
reserving the use of <enabler.biz> for a future commercial
opportunity.
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.
Complainant
has established rights in the ENABLER mark through registration with the
Portuguese Instituto Nacional da Propriedeade Industrial, and subsequent
continuous use.
Respondent’s
<enabler.biz> domain name is identical to Complainant’s registered
ENABLER mark. Respondent’s domain name incorporates Complainant’s mark in its
entirety, mirroring it in spelling and form. Respondent’s domain name deviates
only by the negligible addition of the gTLD “.biz.” However, gTLD’s are not
considered to transform a domain name into a separate and distinct mark and are
not a factor in determining whether a disputed domain name is identical to the
mark at issue. 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).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <enabler.biz> domain name. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable 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”).
Respondent has yet to develop a purpose
for the disputed domain name and has not provided any evidence showing
demonstrable preparations to use <enabler.biz> in connection with
a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).
Respondent has the burden of producing credible evidence that it registered <enabler.biz>
for a legitimate purpose. Respondent’s failure to support its registration
with evidence signifying some right or legitimate interest in the disputed
domain name implies Respondent has none. 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); see also 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 apparent connection between
Respondent’s marketing business and trade name of “Stewart Fenn” and the <enabler.biz>
domain name. Respondent has failed to provide the Panel with any evidence
suggesting its connection to the ENABLER mark is legitimate. There is no
information indicating that Respondent is the owner of a trademark or service
mark identical to <enabler.biz> pursuant to STOP Policy ¶ 4(c)(i),
nor has Respondent refuted Complainant’s accusations that Respondent is not
commonly known by the subject domain name under STOP Policy ¶ 4(c)(iii). 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); 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); 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).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has been satisfied.
The criteria specified in ¶ 4(b) of the
STOP Policy does not represent an exhaustive list of bad faith evidence. The
Panel must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the UDRP is not an exhaustive
list of bad faith evidence).
Due to the nature of the STOP IP Claim
registration procedure, Respondent was given notice of Complainant’s rights in
the ENABLER mark. Complainant asserts exclusive dominion over the ENABLER mark,
which Respondent has failed to refute. Respondent’s registration of an infringing
domain name, despite knowledge of Complainant’s preexisting rights in the
ENABLER mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). 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 Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the domain name
is evidence of bad faith”).
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 relief should be hereby GRANTED.
Accordingly, it is Ordered that the <enabler.biz>
domain name be TRANSFERRED from Respondent to Complainant, and that
subsequent challenges under the STOP Policy against this domain name SHALL
NOT be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 1, 2002.
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