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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