New Pig Corporation v. Highlands a/k/a
DomainCollection.com Inc.
Claim Number: FA0204000110849
Complainant
is New Pig Corporation, Tipton, PA (“Complainant”)
represented by Keith M. Eldred. Respondent is Highlands a/k/a DomainCollection.com Inc., Miami, FL (“Respondent”).
The
domain name at issue is <pig.biz>,
registered with IHoldings.com 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.
James
A. 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 25, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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 2, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Craryas
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
<pig.biz> domain name is identical to Complainant's PIG mark.
Respondent
has no rights or legitimate interests in the <pig.biz> domain
name.
Respondent
registered the <pig.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant is the owner of three
trademarks for PIG on the Principal Register of the United States Patent and
Trademark Office, Reg. Nos. 1,429,718; 1,429,719; 2,255,638. Complainant also owns trademarks for PIG in
many countries throughout the world including: Argentina, Australia, Austria,
Luxemburg, Belgium, Netherlands, Brazil, Canada, China, Colombia, Denmark,
Finland, Greece, Ireland, Israel, Japan, Malaysia, Mexico, Norway, Peru,
Portugal, Russia, Slovenia, South Africa, Spain, Sweden, Switzerland, Thailand,
Ukraine, UK, and Uruguay. Complainant’s
PIG mark is used in conjunction with cleaning products for industrial workplace
settings. Complainant expends
considerable amounts of money annually in advertising and promotion of its
products.
Respondent registered the disputed domain
name on March 27, 2002. Respondent’s
administrative contact name is listed as “DomainCollection.com.” Respondent also lists that the domain name
is for sale at its billing contact address.
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 PIG mark through trademark
registration in the United States and abroad.
Furthermore, Complainant has provided ample evidence of secondary
meaning associated with its PIG mark in relation to its various industrial
cleaning products. Respondent’s <pig.biz>
domain name is identical to Complainant’s PIG mark.
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”).
Considering the generic nature of the
term, a strong showing of secondary meaning must be presented by anyone
claiming to have a trademark or service mark for PIG. Complainant has come forward with evidence showing that it has
rights to the PIG mark, whereas Respondent has not come forward with any
evidence to establish that it has a trademark or service mark for PIG or <pig.biz>. Therefore, Respondent has not established
that it has any rights or legitimate interests in the disputed domain name
pursuant to STOP Policy ¶ 4(c)(i). 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).
Based on Respondent’s Whois
information it can be inferred that Respondent registered the disputed domain
name with the intention of selling it.
If Respondent’s use of the disputed
domain name is to put the domain name up for sale, this use is not considered
to be a bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii). See J.
Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); 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 record that suggests Respondent is
commonly known by anything other than Highlands or Domaincollection.com. Therefore, Respondent has no rights or
legitimate interests in the disputed 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 a domain name when Respondent is not known by the mark); see also
Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has
no rights or legitimate interests in domain names because it is not commonly
known by Complainant’s marks and Respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
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 sell, rent or transfer it based
on the Whois information Respondent provided to the Registrar. Respondent stated that the disputed domain
name was for sale on its administrative and billing contact information. The registration of a domain name for the
primary purpose of selling, renting or transferring is evidence of bad faith pursuant
to STOP Policy ¶ 4(b)(i). See Am.
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 Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the
Respondent chose to identify itself and its administrative and billing contacts
both conceals its identity and unmistakably conveys its intention, from the
date of the registration, to sell rather than make any use of the disputed
domain name”).
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 <pig.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
James A. Crary, Panelist
Dated: July 12, 2002
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