Liberty Mutual Group v. Perfect Entry
Claim Number: FA0204000112442
Complainant
is Liberty Mutual Group, Boston, MA,
USA (“Complainant”) represented by Christopher
Sloan. Respondent is Perfect Entry, Vianen, NETHERLANDS (“Respondent”).
The
domain name at issue is <wausau.biz>,
registered with Ascio Technologies, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her 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 26, 2002; the Forum
received a hard copy of the Complaint on May 2, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 30,
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 27, 2002,
pursuant to STOP Rule 6(b), the Forum appointed James A. Crary 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
The
<wausau.biz> domain name is identical to Complainant’s WAUSAU
mark.
Respondent
has no rights or legitimate interests in the <wausau.biz> domain
name.
Respondent
registered the <wausau.biz> domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
Complainant’s business was founded in
1911. Complainant owns service marks
for WAUSAU registered with the United States Patent and Trademark Office on the
Principal Register (Reg. Nos. 1,316,047 and 1,264,449). Complainant’s first use of the WAUSAU mark
was in February 1954. Complainant has
continued to use the WAUSAU mark in connection with its selling, underwriting
and servicing of insurance products.
Respondent registered the <wausau.biz>
domain name on March 27, 2002 and has yet to develop a use for it.
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 rights in the WAUSAU mark by registration with the United
States Patent and Trademark Office and subsequent continuous use.
Respondent’s
<wausau.biz> domain name contains Complainant’s entire WAUSAU
mark. There is nothing in Respondent’s
domain name that adds anything new to Complainant’s mark except the
inconsequential addition of “.biz.”
Therefore, Respondent’s domain name is identical to Complainant’s WAUSAU
mark.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
In light of the fact that Complainant has
established its rights in the WAUSAU mark and that Respondent has not submitted
a Response in this proceeding, the Panel may presume Respondent has no such
rights or 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).
There is no evidence on the record and
Respondent has not come forward to offer any evidence that it is has rights in
a mark identical to <wausau.biz>, nor that it is commonly known by
WAUSAU or <wausau.biz>.
Therefore, Respondent has not satisfied the requirements of STOP Policy
¶¶ 4(c)(i) and (iii), respectively. 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 CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that Respondent’s failure to produce requested
documentation supported a finding for Complainant under the UDRP).
Complainant’s investigation failed to
uncover any demonstrable preparations to use the <wausau.biz>
domain name in connection with a bona fide offering of goods or services. Respondent has also not provided any
evidence of preparations to use the <wausau.biz> domain name. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to STOP Policy ¶
4(c)(ii). See 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); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question).
Respondent had notice of Complainant’s
rights in the WAUSAU mark due to the unique STOP “IP Claim” notification
procedure. Respondent’s registration of
<wausau.biz> despite notice of Complainant’s rights in the WAUSAU
mark constitutes bad faith. 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”).
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 <wausau.biz>
domain name be TRANSFERRED from Respondent to Complainant, and that
subsequent challenges under the STOP Policy against this domain name SHALL
NOT be permitted.
James A. Crary, Panelist
Dated July 5, 2002
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