Great Barrier Reef Inc. v. Cambridge
Claim Number: FA0204000112464
Complainant
isGreat Barrier Reef, Inc., Joplin,
MO, USA (“Complainant”) represented by William
B Kircher, of Shook, Hardy &
Bacon. Respondent is Cambridge, Miami, FL, USA
(“Respondent”).
The
domain name at issue is <greatbarrierreef.biz>,
registered with Iholdings.com.
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.
Hon.
Ralph Yachnin 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 10, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin 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
<greatbarrierreef.biz> domain name is identical to Complainant's
GREAT BARRIER REEF mark.
Respondent
has no rights or legitimate interests in the <greatbarrierreef.biz>
domain name.
Respondent
registered the <greatbarrierreef.biz> domain name in bad faith.
B.
Respondent
Respondent failed to submit a
Response.
Since 2000, Complainant has been doing
business as GREAT BARRIER REEF in the United States as an Internet Service
Provider. Complainant also uses the
mark in relation to software development and the marketing, advertising and
selling of software products in the field of document management.
Respondent registered the disputed domain
name on March 27, 2002. Respondent
listed its administrative contact information for the domain name registration
as “THIS DOMAIN NAME IS FOR SALE.”
Respondent’s administrative contact name is “domaincollection.com,” a
known domain name seller.
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 GREAT BARRIER REEF mark through its
continuous and substantial use of the mark in relation to its business. The STOP Policy does not require that a
Complainant have a registered trademark, therefore Complainant has established that
it has common law rights to GREAT BARRIER REEF. Respondent’s <greatbarrierreef.biz> domain name is
identical to Complainant’s mark because the omission of spaces between words in
a domain name is irrelevant to whether a mark is identical. See The Fed’n of Gay Games, Inc. v.
Hodgson & Scanlon,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark GAY
GAMES).
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”).
There is no evidence, and Respondent has
not come forward to establish that it owns any trademarks or service marks for
GREAT BARRIER REEF or <greatbarrierreef.biz>. 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 it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name).
Based on Respondent’s registration
information it can be inferred that Respondent registered the domain name in
order to sell it. The sale of a domain
name for profit is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶
4(c)(ii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell domain name suggests it has no legitimate use).
Respondent is known to the Panel as
“Cambridge” and “domaincollections.com.”
There is no evidence on the record to suggest that Respondent is
commonly known as GREAT BARRIER REEF or <greatbarrierreef.biz>. Therefore Respondent has no rights or
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(iii). 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.
Based on Respondent’s registration
information, it can be inferred that Respondent registered the disputed domain
name with the intent to sell the domain name for a price exceeding its
out-of-pocket expenses. The
registration of a domain name for the purpose of selling, renting or
transferring is evidence of bad faith registration and use pursuant to STOP
Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson,
D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent
willingness of the Respondent to sell the domain name in issue from the outset,
albeit not at a price reflecting only the costs of registering and maintaining
the name); see also American Anti-Vivisection Soc’y v. “Infa dot Net”
Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded, are evidence of bad faith”).
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 <greatbarrierreef.biz> be transferred from
Respondent to Complainant and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 14, 2002
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