Colgate-Palmolive Company v.
International Newcastle
Claim Number: FA0204000110803
Complainant
is Colgate-Palmolive Company, New
York, NY (“Complainant”) represented by Bret
I Parker. Respondent is International Newcastle, Miami, FL
(“Respondent”).
The
domain name at issue is <hills.biz>,
registered with IHoldings.com, Inc.
d/b/a DotRegistrar.com.
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.
Hon.
Ralph Yachnin 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 24, 2002; the Forum
received a hard copy of the Complaint on April 24, 2002.
On
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 3,
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 5, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
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
<hills.biz> domain name is identical to Complainant's HILL’S mark.
Respondent
has no rights or legitimate interests in the <hills.biz> domain
name.
Respondent
registered the <hills.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to respond.
Complainant owns several trademark
registrations for HILL’S in relation to pet food products. Complainant’s HILL’S mark is registered with
the United States Patent and Trademark Office as Registration Numbers 955,342
and 2,060,554.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has found evidence that Respondent registered the disputed domain
in order to sell it, including the words “THIS DOMAIN IS FOR SALE,” in the
address line of its registration information.
Respondent is not the owner of any trademarks or service marks for
HILL’S anywhere in the world.
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 HILL’S mark through registration and
continuous use. The <hills.biz>
domain name is identical to Complainant’s HILL’S mark because it is impossible
to include an apostrophe in a domain name, therefore the omission of an
apostrophe in a domain name is insignificant when determining whether a domain
name is identical. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Commercial Investors Realty v. Bank of New York,
FA 103040 (Nat. Arb. Forum Feb. 18, 2002) (finding the Complainant’s THE
INVESTOR’S CHOICE! mark to be identical to the <investorschoice.biz>
domain name).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
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”).
Respondent has come forward with no
evidence to prove that it has a trademark or service mark for HILL’S or <hills.biz>
anywhere in the world. Therefore
Respondent has failed to establish that it has rights or legitimate interests
in the disputed 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); see also 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).
Based on the fact that Respondent listed
the domain name for sale on its registration information it can be inferred
that Respondent’s primary purpose for registering the domain name was to sell
it. The sale of a domain name is not
considered to be a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the Respondent registered the domain name with
the intention of selling the domain name).
There is no
evidence on the record that suggests that Respondent is commonly known by any other
name than International Newcastle. Therefore Respondent has failed to establish
that it is commonly known as HILL’S or <hills.biz> pursuant to
STOP Policy ¶ 4(c)(iii). 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.
The registration of a domain name for the
primary purpose of selling, renting or transferring that domain name is
considered to be bad faith registration and use pursuant to STOP Policy ¶
4(b)(i). Based on Respondent’s listing
of the domain name for sale in its domain name registration information, it can
be inferred that Respondent registered the disputed domain name in order to
sell it, which constitutes bad faith. See
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); see also Microsoft
Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where
that Respondent registered the domain name for the purpose of selling it, as
revealed by the name the Respondent chose for the registrant, “If you want this
domain name, please contact me”).
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 <hills.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 9, 2002
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