Andrew Corporation v. Vitty Inc.
Claim Number: FA0204000112440
Complainant
is Andrew Corporation, Orland Park,
IL, USA (“Complainant”) represented by Zachary
Smolinski, of Jenkens &
Gilchrist. Respondent is Paul Chou d/b/a Vitty Inc.,
Taipei, TAIWAN (“Respondent”).
The
domain name at issue is <andrew.biz>,
registered with 007 Names Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin 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 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
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 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Sandra Franklin 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
1. Respondent’s <andrew.biz> domain
name is identical to Complainant’s ANDREW mark.
2. Respondent has no rights or legitimate
interests in the <andrew.biz> domain name.
3. Respondent registered the <andrew.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of forty-three
trademark registrations and four pending applications held worldwide for the
ANDREW mark. Specifically, Complainant owns U.S. Reg. No. 959,263 issued May
22, 1973, No. 1,861,667 issued November 8, 1994, and Taiwan Reg. No. 635,484
issued March 1, 1994, among others. Complainant has continuously and
consistently used its ANDREW mark in the marketing and sales of its products
and services throughout the world. Complainant also operates a website at
<andrew.com>.
Respondent registered the contested
domain name on March 27, 2002 and has yet to develop a purpose for the attached
website. Complainant’s investigation has determined that Respondent does not
own any registered trademarks or service marks for the ANDREW mark. Also,
Respondent is not a franchisee or a licensee of Complainant. Furthermore,
Respondent has operated a business in competition with Complainant since as
early as 2000.
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.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no 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 Respondent’s 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 has established that it has
rights in the disputed domain name because it is the owner of the relevant
internationally registered trademarks. Respondent has not come forward to
proffer any evidence that it has rights in the ANDREW mark anywhere in the
world. Therefore, Respondent has not established rights or legitimate interests
in the <andrew.biz> domain name under 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).
It can be inferred that Respondent’s
planned use of the domain name identical to Complainant’s mark will be to
divert Internet users interested in Complainant’s services to Respondent’s
website. As stated in the findings, Respondent is involved in the same business
as Complainant and competes for customers with similar interests. Therefore,
Respondent’s registration of <andrew.biz> is not in connection
with a bona fide offering of goods and services under STOP Policy ¶ 4(c)(ii). See
William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum
March 21, 2002) (finding the
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests
where Respondent diverted Complainant’s customers to his websites).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <andrew.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Respondent is known to
this Panel as Paul Chou, or Vitty, Inc. Complainant’s investigation has
determined that Respondent operates a website at <vitty.com> where there
is no mention of the ANDREW mark or any variation of it. 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
There are unrefuted circumstances
indicating that Respondent registered the domain name primarily for the purpose
of disrupting the business of Complainant. As previously stated in the
findings, Respondent has been in competition with Complainant since as early as
2000 offering similar services and selling comparable products while operating
from its <vitty.com> website. Registering Complainant’s ANDREW mark in a
domain name represents bad faith under STOP Policy ¶ 4(b)(iii). The ANDREW mark
represents a mark in which Respondent has no apparent legitimate business
interest in except in using it to disrupt Complainant’s business. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the Complainant's marks suggests that the
Respondent, the Complainant’s competitor, registered the names primarily for
the purpose of disrupting the Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the
domain name in question to disrupt the business of Complainant, a competitor of
Respondent).
Due to Complainant’s numerous
international registrations of the ANDREW mark, Complainant’s business being in
competition with Respondent, and NeuLevel’s STOP IP claim notification
procedure, Respondent was aware of the existence of Complainant’s ANDREW mark
when it registered the disputed domain name. Respondent’s subsequent
registration of the disputed domain name signifies 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 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”).
Additionally, Respondent’s <andrew.biz>
domain name is identical to Complainant’s established ANDREW mark. Internet
users will believe that there is some affiliation between Respondent and
Complainant. Registration of the <andrew.biz> domain name is
evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since it is probable
that Respondent will attract Internet users seeking Complainant’s products and
services. See TM Acquisition Corp.
v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith
where Respondent used the domain name, for commercial gain, to intentionally
attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to
attract customers to its website, <efitnesswholesale.com>, and created
confusion by offering similar products for sale as Complainant).
Accordingly, 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 <andrew.biz> be TRANSFERRED from Respondent to
Complainant and that subsequent challenges under the STOP Policy against this
domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated: June 18, 2002
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