RGB Spectrum v. RGB Vídeo-instal.lacinons
S.A.
Claim Number: FA0204000112463
Complainant
is RGB Spectrum, Alameda, CA, USA
(“Complainant”). Respondent is RGB Video-instal.lacinons S.A.,
Barcelona, SPAIN (“Respondent”).
The
domain name at issue is <rgb.biz>,
registered with Nominalia Internet SL.
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.
James
A. Carmody, Esq., 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 24, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Carmody, Esq., 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 <rgb.biz> domain
name is identical to Complainant’s RGB mark.
2. Respondent has no rights or legitimate
interests in the <rgb.biz> domain name.
3. Respondent registered the <rgb.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant
is the owner of U.S. Trademark Reg. No. 1,702,902 issued July 28, 1992 for the
initials RGB in a logo. Complainant has been involved in the development and
sale of audio-video products internationally since 1988, including the sale of
such products in Respondent’s country, Spain. During this time Complainant has
maintained an international sales presence with advertising and trade shows
promoted under the RGB mark. Complainant has operated from the <rgb.com>
domain name since 1995.
Respondent
registered <rgb.biz> on March 27, 2002. Respondent is an
audio-visual company that sells equipment and similar products as Complainant.
Respondent has been using the disputed domain in connection with a website that
showcases audio-visual products on its website.
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 RGB mark through registration with
the U.S. Patent and Trademark Office and subsequent continuous use of the mark.
Respondent’s <rgb.biz> domain name is identical to Complainant’s
RGB 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).
Respondent has not come forward to
proffer any evidence that it has rights in the RGB mark anywhere in the world.
Therefore, Respondent has not established rights or legitimate interests in the
<rgb.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).
Respondent is using the disputed domain
name identical to Complainant’s mark to divert Internet users interested in
Complainant’s products and services to Respondent’s competing website.
Respondent’s unauthorized use of the goodwill associated with Complainant’s
mark to sell competing products is illegitimate and does not constitute a bona
fide offering of goods or services under 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 Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <rgb.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Respondent is not a
licensee or authorized agent of Complainant. 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, a competitor offering similar
products and services. As previously stated, Respondent’s website sells
equipment and products similar to Complainant’s. Respondent’s registration and
use of the disputed domain name represent bad faith under STOP Policy ¶
4(b)(iii). Internet users will likely believe there is an affiliation between
Respondent’s website and Complainant’s mark. Respondent commercially benefits
from the confusion it generates. See 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); see also Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion).
Furthermore, Respondent’s registration
of a mark identical to Complainant’s exhibits opportunistic bad faith under
STOP Policy ¶ 4(b)(iv). Respondent is
attempting to commercially benefit by ensnaring Internet users in search of
Complainant’s products and services. Confusion among users is even more likely
because Respondent is offering nearly identical products as Complainant. See
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 the
affiliation between Respondent and Complainant); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website).
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 <rgb.biz> be TRANSFERRED from
Respondent to Complainant and that subsequent challenges under the STOP Policy
against this domain SHALL NOT be permitted.
James A. Carmody, Esq., Panelist
Dated: June 27, 2002
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