Newspaper Association of America v.
EarlyBird
Claim Number: FA0204000112460
Complainant
is Newspaper Association of America,
Vienna, VA, USA (“Complainant”) represented by Gary D Peifer. Respondent
is EarlyBird, Austin, TX, USA
(“Respondent”).
The
domain name at issue is <connections.biz>,
registered with Alldomains.com, 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.
The
Honorable Charles K. McCotter, Jr. 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 26, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 29,
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 July 1, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. 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
<connections.biz> domain name is identical to Complainant's
CONNECTIONS mark.
Respondent
has no rights or legitimate interests in the <connections.biz>
domain name.
Respondent
registered the <connections.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant registered its CONNECTIONS
mark with the United States Patent and Trademark Office as Registration Number
1,937,152 in relation to conducting workshops and conferences in the field of
multi-media and the newspaper industry.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not licensed by Complainant to use the CONNECTIONS mark.
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 to the CONNECTIONS mark through registration
with the United States Patent and Trademark Office. Complainant’s CONNECTIONS mark is identical to Respondent’s <connections.biz>
domain name.
Therefore,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent does not have a trademark or
service mark for CONNECTIONS or <connections.biz> anywhere in the
world. Therefore, Respondent does not
have rights or legitimate interests in the disputed domain name pursuant to
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 a domain name identical to Complainant's mark is to divert
Internet users interested in Complainant to Respondent's website. The intended use of a domain name identical
to Complainant's mark to divert Internet users to Respondent's website is not
considered a bona fide offering of goods or services pursuant of STOP Policy ¶ 4(c)(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)”).see also Household
Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000)
(inferring that Respondent registered the domain name
<householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark,
with hopes of attracting Complainant’s customers and thus finding no rights or
legitimate interests).
Respondent is not commonly known by the
<connections.biz> domain name pursuant to STOP Policy ¶
4(c)(iii). See Great
S. Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com> where
Respondent linked the domain name to <bestoftheweb.com>); see
also CBS Broadcasting, Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent
has failed to demonstrate any rights or legitimate interests in the
<twilight-zone.net> domain name since Complainant had been using the
TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the nature of the STOP IP Claim
procedure Respondent received notice of Complainant’s rights in the <connections.biz>
domain name when it registered the disputed domain name. Respondent’s registration of the domain name
despite this notice is evidence of 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”).
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 <connections.biz> be transferred from
Respondent to Complainant and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 9, 2002
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