NCR Corporation v. Swarthmore Associates
LLC
Claim Number: FA0204000112462
Complainant
is NCR Corporation, Dayton, OH (
“Complainant “) represented by Paul
Martin. Respondent is Swarthmore Associates LLC, Pacific
Palisades, AL (“Respondent”).
The
domain name at issue is <ncr.biz>,
registered with PSI-Japan, Inc.
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 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 23,
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 6, 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:
The
<ncr.biz> domain name is identical to Complainant's NCR mark. Respondent has no rights or legitimate
interests in the <ncr.biz> domain name. Respondent registered the
<ncr.biz> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant registered its NCR mark with
the United States Patent and Trademark Office as Registration Numbers 148,174;
366,404; 368,485 and 744,221, among others.
These trademarks are in relation to automatic banking machines,
periodicals, computer hardware, business equipment, paper and inkpads. Complainant has held a trademark for NCR
since 1921. Complainant also holds
registrations for <ncr.com> and <ncr.info>.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not licensed by Complainant to use the NCR mark. Complainant’s investigation found no evidence of any trademarks
or service marks owned by Respondent for NCR.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and shall infer such findings as 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
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 Complainant asserts
rights.
Complainant
established in this proceeding that it has rights to NCR through its numerous
trademark and service mark registrations with the United States Patent and
Trademark Office. The Respondent’s
domain name <ncr.biz> domain name is identical to Complainant’s
NCR mark.
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”).
No evidence in the record suggests that
Respondent owns a trademark or service mark for NCR or <ncr.biz>
and Respondent has not come forward to present any such evidence. Therefore Respondent has not established
that it has 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 Respondent 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’s services 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 to
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 Respondent had no rights or legitimate
interests pursuant to STOP Policy ¶ 4(c)(ii)); see also 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)”).
No evidence in the record suggests and
Respondent has not come forward to establish evidence to show that Respondent
is commonly known by the <ncr.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.
It can be inferred, based on the fact
that Complainant is already present on the Internet and based on the fact that
Respondent has no rights in the NCR mark, that Respondent registered the
disputed domain name in order to prevent Complainant from reflecting its mark
in another corresponding domain name.
This is evidence of bad faith registration and use pursuant to STOP
Policy ¶ 4(b)(ii). See Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002)
(finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it
was reasonable to conclude that Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge
of Complainant's mark and Respondent's lack of rights or interests in the
mark).
Furthermore, it can be inferred that
Respondent registered the disputed domain name in order to attempt to benefit
from Complainant’s goodwill by creating a likelihood of confusion as to the
source, sponsorship and affiliation of Respondent’s website at <ncr.biz>. This is evidence of bad faith use pursuant
to STOP Policy ¶ 4(b)(iv). See Fluor
Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that,
where the Respondent’s <fluor.biz> domain name was identical to the
Complainant’s FLUOR mark, Internet users would likely believe that an
affiliation existed between Respondent and Complainant); see also Pillsbury
Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002)
(finding registration of a domain name identical to Complainant’s mark to be in
bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to an affiliation between Respondent and Complainant).
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 <ncr.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 20, 2002.
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