START-UP TRADEMARK OPPOSITION POLICY
UFO Contemporary Inc. v. Domain Contact
Claim Number: FA0204000112433
Complainant is UFO Contemporary Inc., New York, NY, USA (“Complainant”) represented by Lorna J. Brody. Respondent is Domain Contact, St. Johns, ANTIGUA (“Respondent”), represented by Guido Struben.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ufo.biz>, registered with Tucows, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 26, 2002; the Forum received a hard copy of the Complaint on April 27, 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 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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.
On July 10, 2002, Respondent submitted an untimely Response which the Panel in its discretion has considered.
Transfer of the domain name from Respondent to Complainant.
The <ufo.biz> domain name is identical to Complainant's UFO mark.
Respondent has no rights or legitimate interests in the <ufo.biz> domain name.
Respondent registered the <ufo.biz> domain name in bad faith.
Respondent contends that UFO is a commonly known generic term meaning “Unidentified Flying Object”. Respondent denies any intent to sell the domain name and does not intend to create a likelihood of confusion with Complainant’s mark.
Complainant owns trademarks in various countries for its UFO mark including; the United States (Reg. No. 938,927), Canada (Reg. No. 186,795), Argentina (Reg. No. 1.288.587), Italy (Reg. No. 324.250), India (Reg. No. 388739) and China (Reg. No. 150746). Complainant uses its trademark in relation to men’s and women’s apparel, cosmetics, accessories, and jewelry. Complainant has used the mark for over thirty years.
Respondent registered the disputed domain name <ufo.biz> on March 27, 2002. Complainant’s investigation has found no evidence that Respondent does business under the UFO mark or owns any trademarks or service marks 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.”
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’s Rights in the Mark
Complainant has established that it has rights in the UFO mark through registration throughout the world and continuous use. Respondent’s <ufo.biz> domain name is identical to Complainant’s UFO mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
There is no evidence that Respondent owns a trademark or service mark for UFO or <ufo.biz>. Therefore, Respondent has not established that it has 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).
Furthermore, Respondent has not come forward with any evidence to show that it is commonly known as UFO or <ufo.biz> and therefore has no rights or legitimate interests in <ufo.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).
A Respondent in a STOP proceeding may demonstrate its rights or interests in a disputed domain name by proving its use of or demonstrable preparations to use the domain name for a bona fide offering of goods or services. STOP Policy ¶ 4(c)(ii). However, Respondent has failed to state its intended use of the domain name.
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Registration or Use in Bad Faith
Based on the unique nature of the STOP IP Claim procedure, Respondent was on notice as to Complainant’s rights in the <ufo.biz> domain name when it registered <ufo.biz>. Therefore, Respondent’s registration of the disputed domain name despite this notice is evidence of bad faith pursuant to STOP Policy ¶ 4(a)(iii). See 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”); see also 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”).
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 <ufo.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 15, 2002