Hasbro Inc. v. Cambridge a/k/a DomainCollection.com Inc.
Claim Number: FA0204000112481
Complainant is Hasbro Inc., New York, NY (“Complainant”) represented by Allison K. Rutledge-Parisi, of Patterson Belknap Webb & Tyler LLP. Respondent is Cambridge a/k/a DomainCollection.com Inc., Miami, FL (“Respondent”).
The domain name at issue is <monopoly.biz>, registered with IHoldings.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.
John J. Upchurch 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 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch 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.
The <monopoly.biz> domain name is identical to Complainant’s MONOPOLY mark.
Respondent has no rights or legitimate interests in the <monopoly.biz> domain name.
Respondent registered the <monopoly.biz> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has owned a United States Trademark for MONOPOLY since 1935 (Reg. No. 326,723 registered on the Principal Register). Complainant has expended and continues to expend substantial time, money, and effort in promoting its MONOPOLY mark in connection with the MONOPOLY board game and many other goods. Consequently, the MONOPOLY mark has become well-known worldwide.
Respondent registered the <monopoly.biz> domain name on March 27, 2002 and has not developed a use. Complainant learned through a representative that Respondent was offering the domain name for sale. In fact, Respondent offered to sell the domain name to Complainant’s representative for $4,900. Complainant’s representative counter-offered for $3,000. Respondent replied stating that the domain name was no longer for sale but that the representative should check back in a month to receive an “update on this matter.”
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 its rights to the MONOPOLY mark through registration with the United States Patent and Trademark Office and subsequent continuous use. Respondent’s <monopoly.biz> domain name contains Complainant’s entire MONOPOLY mark and the generic top-level domain “.biz.” Therefore, Respondent’s domain name is identical to Complainant’s mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights to and interests in the MONOPOLY mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or 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).
There is no evidence on the record and Respondent has not come forward to offer any evidence that it is the owner or beneficiary of a trade or service mark that is identical to the <monopoly.biz> domain name. Therefore, Respondent does not have any rights or legitimate interests 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).
Due to Respondent’s lack of Response and the level of fame the MONOPOLY mark enjoys, it can be inferred that any use of <monopoly.biz> by Respondent would be an opportunistic attempt to trade on the goodwill of Complainant’s famous mark. Therefore, no plausible bona fide offering of goods or services in connection with <monopoly.biz> exists. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore, Respondent had no rights or legitimate interests); 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).
There is no evidence on the record, nor has Respondent come forward to offer any evidence that it is commonly known as MONOPOLY or <monopoly.biz>. Respondent is only known to this Panel as DomainCollection.com and has never received authorization from Complainant to use the MONOPOLY mark. 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). Furthermore, Complainant’s longstanding use of its MONOPOLY mark since 1935 creates a presumption that Respondent cannot be known by the famous mark. See CBS Broad., 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.
Respondent is in the business of selling domain names and offered to sell the <monopoly.biz> domain name to Complainant’s representative for $4,900, an amount in excess of out-of-pocket cost for registering and maintaining the domain name. Respondent’s behavior evidences bad faith 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 Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs).
Respondent had notice of Complainant’s rights and interests in the MONOPOLY mark due to: (1) the mark’s registration on the Principal Register, (2) the mark’s well-established identity and (3) the unique STOP IP claim notification procedure. Therefore, Respondent’s registration of the <monopoly.biz> domain name with knowledge of Complainant’s rights and interests in the MONOPOLY mark constitutes bad faith. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); 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 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 <monopoly.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
John J. Upchurch, Panelist
Dated: June 28, 2002
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