Barclays Global Investors v. Vitty Inc.
Claim Number: FA0204000112471
Complainant
is Barclays Global Investors, San
Francisco, CA, USA (“Complainant”) represented by Jonathan D. Reierson.
Respondent is Vitty Inc.,
Taipei, TAIWAN (“Respondent”) represented by Paul Chou.
The
domain name at issue is <bgi.biz>,
registered with 007 Names, 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. (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 May 22, 2002.
On
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 17,
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 17, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (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.
A.
Complainant
The
<bgi.biz> domain name is identical to Complainant's BGI mark.
Respondent
has no rights or legitimate interests in the <bgi.biz> domain
name.
Respondent
registered the <bgi.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
Complainant registered its BGI mark with
the United States Patent and Trademark Office as Registration Number 2,274,159
on August 31, 1999. Complainant uses
the mark in relation to bank services, mutual fund investment advisory
services, and investment management services.
Complainant also owns registrations for the mark in the UK, Hong Kong,
Japan, and the EU.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has revealed that Respondent’s parent company, Web Express, is
located in New Jersey.
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 BGI mark through its registration
with the United States Patent and Trademark Office. Furthermore, Respondent’s <bgi.biz> domain name is
identical to Complainant’s mark because it incorporates the entirety of
Complainant’s mark and merely adds the “.biz” generic top-level domain.
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
has not come forward with any evidence that it owns a trademark or service mark
for BGI. Respondent has also not
provided any evidence that it is doing business under the mark. Therefore, Respondent has failed to
establish that it has any 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
is Respondent’s responsibility to provide evidence that it plans to use the
disputed domain name in connection with a business purpose. Respondent’s failure to provide this
evidence allows the Panel to infer that Respondent has no intention of using
the disputed domain name in connection with a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii).
Respondent has failed to come forward with any evidence in this
proceeding, therefore the Panel finds that Respondent failed to establish
rights and legitimate interests under STOP Policy ¶ 4(c)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000)
(finding that absent evidence of preparation to use the domain name for a
legitimate purpose, the burden of proof lies with the Respondent to demonstrate
that it has rights or legitimate interests); see also 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 record that Respondent is commonly known by any other name
than “Vitty Inc.” or its parent company’s name “Web Express.” Respondent has therefore failed to establish
that it has rights or legitimate interests in <bgi.biz> pursuant
to STOP Policy ¶ 4(c)(iii), because there is no evidence that it is commonly
known as BGI or <bgi.biz>.
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 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).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Based on the location of Respondent’s
parent company in the United States, and the unique nature of the STOP IP Claim
procedure, it can be inferred that Respondent had both constructive and actual
notice of Complainant’s rights in the <bgi.biz> domain name when
Respondent registered the domain name.
Registration of <bgi.biz> domain name, despite this
knowledge, is evidence of bad faith pursuant to 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 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”).
The
<bgi.biz> domain name is identical to Complainant's BGI mark and
the Internet user will likely believe that there is an affiliation between
Respondent and Complainant.
Registration of the <bgi.biz> domain name despite it being
identical is evidence of bad faith 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 an affiliation between the 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 the
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 <bgi.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.
(Ret.), Panelist
Dated: July 23, 2002
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