Fort Dearborn Life Insurance Company v. dotPartners LLC
Claim Number: FA0204000112455
Complainant is Fort Dearborn Life Insurance Company, Chicago, IL (“Complainant”). Respondent is dotPartners LLC, Livingston, NJ (“Respondent”).
The domain name at issue is <pfg.biz>, registered with TLDS, 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.
Judge Harold Kalina (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 6, 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 Judge Harold Kalina (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, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
1. Respondent’s <pfg.biz> domain name is identical to Complainant’s PFG mark.
2. Respondent has no rights or legitimate interests in the <pfg.biz> domain name.
3. Respondent registered the <pfg.biz> domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,410,562, registered December 5, 2000 on the Principal Register for the PFG mark. Complainant’s mark is used for the administration and underwriting of life, health and casualty insurance.
Respondent registered the contested domain name on March 27, 2002 and has yet to designate a purpose for the domain name or develop an attached website. Complainant’s investigation has revealed that Respondent registered 192 apparently unrelated domain names, including <pfg.biz> and other names that reflect the marks of other entities. Complainant compiled a list of Respondent’s registered domains, which includes the following names: <household.biz>, <peter.biz>, <livesex.biz>, <male.biz>, <zodiac.biz>, <beauty.biz>, <slut.biz>, <irish.biz> and <orbitz.biz>.
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 that it has rights in the PFG mark through registration with the USPTO on the Principal Register, and subsequent continuous use of the mark. Respondent’s <pfg.biz> domain name is identical to Complainant’s PFG mark in form and spelling.
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 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 has established that it has rights in the disputed domain name because it is the owner of the relevant USPTO registration. Respondent has not come forward to proffer any evidence that it has rights in the PFG mark anywhere in the world. Therefore, Respondent has not established rights or legitimate interests in the <pfg.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 financial services to Respondent’s website. This is not a legitimate use of the <pfg.biz> domain name under STOP Policy ¶ 4(a)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”). Furthermore, Respondent has failed to come forward with evidence illustrating a valid course of business under the disputed domain name. Respondent has failed to exhibit demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services 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).
There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <pfg.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Respondent is known to this Panel as dotPartners, LLC. See 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); see also 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).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
There are unrefuted circumstances indicating that Respondent registered the domain name primarily in order to prevent Complainant from reflecting its mark in a corresponding name under STOP Policy ¶ 4(b)(ii). As previously stated, Respondent registered 192 apparently unrelated domain names during NeuLevel’s “.biz” registration procedure. Respondent’s registered domain names are unrelated with the exception that some reflect a generic word that may be considered valuable, while others represent the established marks of businesses (e.g., Orbitz). Respondent’s pattern of behavior evidences bad faith registration under STOP Policy ¶ 4(b)(ii). See Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding bad faith that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Due to Complainant’s registration of the PFG mark on the Principal Register of the USPTO and NeuLevel’s STOP IP claim notification procedure, Respondent was constructively aware of the existence of Complainant’s mark when it registered the disputed domain name. Respondent’s actions signify bad faith registration under STOP Policy ¶ 4(a)(iii). See 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”); see also 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).
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 domain name <pfg.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain SHALL NOT be permitted.
Judge Harold Kalina, Panelist
Dated: June 26, 2002
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