Defensive Driver Online Ltd. v. Marco Publishing Corporation
Claim Number: FA0204000112435
Complainant is Defensive Driver Online Ltd., Houston, TX (“Complainant”) represented by Matthew G Reeves, of Locke Liddell & Sapp LLP. Respondent is Marco Publishing Corporation, Us, TX (“Respondent”).
The domain name at issue is <defensivedriving.biz>, registered with Bondi LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits 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 8, 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 June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
Complainant asserts that it has a common law mark in DEFENSIVE DRIVING due to its use of the words in relation to its online driving school and in its Texas licensed driver education school. Complainant notes that it has trademark applications pending for DEFENSIVEDRIVING.COM with design, and DEFENSIVEDRIVER.COM with design. Complainant asserts that its common law DEFENSIVE DRIVING mark is identical to the <defensivedriving.biz> domain name, and that the disputed domain name is confusingly similar to its trademark applications.
Complainant asserts that Respondent has no rights or legitimate interests in the <defensivedriving.biz> domain name because Respondent is a cybersquatter and has registered more than ninety “.biz” domain names containing numerous marks of others. Complainant asserts that Respondent cannot possibly be planning to use all of these domain names for legitimate business purposes and that the Panel may therefore infer that Respondent has no rights or legitimate interests in <defensivedriving.biz>.
Complainant further asserts that Respondent registered the <defensivedriving.biz> domain name in bad faith because circumstances indicate that Respondent registered the domain name for the primary purpose of selling, renting, or transferring the domain name for profit.
B. Respondent failed to submit a Response.
Complainant asserts that it has common law trademark rights in the terms DEFENSIVE DRIVING. Complainant provides evidence of trademark applications for DEFENSIVEDRIVER.COM and DEFENSIVEDRIVING.COM with the United States Patent and Trademark Office and asserts common law rights to the DEFENSIVE DRIVING mark, deriving from prior continuous use. As evidence of this prior use and common law rights, Complainant submitted three copies of Complainant’s license to operate a driving safety school. The driving school licenses offered refer to Complainant as “DefensiveDriving.com,” “Defensive Driver Online, Ltd.,” and “TexasDefensiveDriving.net,” but do not refer specifically to Complainant as DEFENSIVE DRIVING. Complainant also refers to itself on its website as <defensivedriving.com> and as DEFENSIVEDRIVING.COM, but not as DEFENSIVE DRIVING, per se. The United States Patent and Trademark Office “USPTO” website also lists a disclaimer in relation to Complainant’s trademark application that states that “no claim is made to the exclusive right to use DEFENSIVEDRIVING.COM apart from the mark as shown.” The mark as shown on the USPTO website is DEFENSIVEDRIVING.COM with an illustration.
Respondent registered the disputed domain name March 27, 2002. Respondent registered ninety-three names under the name Marco Publishing Corporation. Most of the names registered by Respondent are of a generic nature such as the following: <creditcards.biz>, <contacts.biz>, <watches.biz> and <wirelessphone.biz>. Complainant urges that its information shows and Complainant believes that Respondent is an individual named Mark Ostrofsky, a well-known generic domain name sales entrepreneur.
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 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 Complainant has rights; and
(2) 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 STOP proceedings, a STOP Complaint may be filed only 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 asserts common law rights in the DEFENSIVE DRIVING mark, and Complainant provided proof of use of the mark in commerce by virtue of its licensure from the State of Texas to conduct schools as DEFENSIVEDRIVING.COM.
Much as they can do so in UDRP claims, a Complainant may establish rights in its mark at common law. See Crazy Creek Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating its common law rights in the CRAZY CREEK mark).
The Panel finds that a license for successive years to engage in the business under the name Complainant seeks to protect is sufficient proof that Complainant has engaged in commerce under the name to such a degree as would give rise to common law rights in the name. While somewhat generic, DEFENSIVE DRIVING has been recognized by the State of Texas to be associated with Complainant through its issuance of a license to Complainant to provide education to the citizens of Texas and others using that name for successive years. Complainant also has shown through its state-issued licenses to operate that it is engaging in commerce as DEFENSIVE DRIVING.COM and that the mark has acquired secondary meaning in Texas in relation to Complainant such as would give rise to common law rights to DEFENSIVE DRIVING.COM.
Complainant also has submitted evidence that it has a trademark application for, and common law rights to DEFENSIVEDRIVING.COM. STOP Policy ¶ 4(a)(i) requires that the disputed domain name be identical to a trademark or service mark in which the Complainant has rights and not just be merely confusingly similar. Complainant’s application to register DEFENSIVEDRIVING.COM was accompanied by a disclaimer stating that Complainant only claimed exclusive rights to the mark in the form displayed at the USPTO website with illustration. Complainant’s DEFENSIVEDRIVING.COM mark is identical to Respondent’s <defensivedriving.biz> for the purpose of resolving domain name disputes. See AJC, Intl v. None a/k/a Cox Holdings, FA 109367 (Nat. Arb. Forum June 11, 2002) (finding that, for the purpose of domain name disputes, Respondent’s service mark in AJC.COM is equivalent to AJC and thus identical to <ajc.biz>). When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every internet site provider must use as part of its address.” U.S. Patent and Trademark Office Examination Guide No. 2-99, “Marks Composed, in Whole or in Part, of Domain Names,” Sec. I (Sept. 29, 1999).
The Panel finds that Complainant has established that it has rights to <defensivedriving.com> and that the domain name is identical to the disputed domain name <defensivedriving.biz>.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Under STOP Policy ¶ 4(c), the Respondent may demonstrate its rights or interests by proving:
i. The Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has acquired no trademark or service mark rights.
Because of the intended commercial nature of websites hosted at “.biz” domain names, STOP Policy ¶ 4(c) does not contemplate that a Respondent may demonstrate its rights/interests through legitimate or noncommercial fair use as the corresponding paragraph in the UDRP does.
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and in view of Respondent’s failure to respond, the Panel may presume Respondent has no such 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 asserts that Respondent has no “rights, title or legitimate interests” in the DEFENSIVEDRIVING.COM mark or the <defensivedriving.biz> domain name. Also, Respondent has not come forward to offer any evidence that it is the owner or beneficiary of a trade or service mark that is identical to <defensivedriving.biz>. Therefore, Respondent has not met the requirement of 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).
No evidence in the record suggests and Respondent has not come forward to offer any evidence to show that Respondent has arrangements to use the <defensivedriving.biz> domain name in connection with a bona fide offering of goods or services. Without any evidence to show demonstrable plans to use the domain name it may be presumed that there are no plans to use the domain name. Thus, Respondent has not met the burden of STOP Policy ¶ 4(c)(ii). 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).
Respondent is known by this Panel only as Marco Publishing Corporation; no evidence shows that Respondent is commonly known as DEFENSIVEDRIVING.COM or <defensivedriving.biz>. Therefore, Respondent has no rights or legitimate interests in the domain name 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent had, at the very least, actual notice of Complainant’s rights in the DEFENSIVE DRIVING.COM mark prior to registering the domain name due to the notification received from the STOP registration procedure. Respondent’s registration of <defensivedriving.biz>, despite knowledge of Complainant’s rights, constitutes bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); 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”); 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 STOP Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <defensivedriving.biz> domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted because there are no further IP Claims.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 9, 2002.
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