Tone Brothers Inc v. J.W. Saputro
Claim Number: FA0204000112482
Complainant
is Tone Brothers Inc., Ankeny, IA,
USA (“Complainant”) represented by George
O Petty. Respondent is J.W. Saputro, Bogor, INDONESIA
(“Respondent”).
The
domain name at issue is <spiceislands.biz>,
registered with Ascio Technologies, 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 30, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 30,
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 timely 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 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.
On
June 27, 2002, the Forum notified the Panel that Complainant filed an
Additional Submission that was not timely and that was not in compliance with
STOP Supplemental Rule #7. The Panel
has not considered this submission.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
The
<spiceislands.biz> domain name is identical to Complainant’s SPICE
ISLANDS mark. Respondent has no rights
or legitimate interests in the <spiceislands.biz> domain
name. Respondent registered the <spiceislands.biz>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple registrations
for the SPICE ISLANDS mark in various countries, including the United States,
Indonesia, United Kingdom, and Chile, among others. Complainant’s SPICE ISLANDS mark is used in connection with goods
in the food industry.
Respondent registered the <spiceislands.biz>
domain name on March 27, 2002 and has yet to develop a use.
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 draw such inferences 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
has established in this proceeding that it has rights in the SPICE ISLANDS mark
through worldwide trademark registration.
Respondent’s
<spiceislands.biz> domain name contains Complainant’s entire SPICE
ISLANDS mark. Respondent’s domain name
adds the inconsequential “.biz” to Complainant’s mark. Therefore, Respondent’s domain name is
identical to Complainant’s mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and in view of Respondent’s failure to respond, the Panel may presume
Respondent has no such 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).
Complainant asserts that Respondent has
no “rights, title or legitimate interests” in the SPICE ISLANDS mark or the <spiceislands.biz>
domain name. Also, 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 <spiceislands.biz>. Therefore, Respondent has not met the
requirement of STOP Policy ¶ 4(c)(i). See
Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23,
2000) (finding no rights or legitimate interests under the UDRP where no such
right or interest is immediately apparent to the Panel and Respondent has not
come forward to suggest any right or interest it may possess); see also
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).
No evidence in the record suggests and
Respondent has not come forward to offer any evidence that it has arrangements
to use the <spiceislands.biz> domain name in connection with a
bona fide offering of goods or services.
Without any evidence to show demonstrable plans to use the domain name,
it may be presumed that there are no plans to use the domain name. Thus, Respondent has not met the burden of
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 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).
Respondent is known by this Panel only as
J.W. Saputro and no evidence shows that Respondent is commonly known as SPICE
ISLANDS or <spiceislands.biz>.
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to STOP Policy ¶ 4(c)(iii). 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 the domain name when Respondent is not
known by the mark).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name,
thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent had, at the very least,
constructive notice of Complainant’s rights in the SPICE ISLANDS mark prior to
registering the domain name due to Complainant’s trademark registrations in
Respondent’s home country, Indonesia.
Furthermore, Respondent had actual notice of Complainant’s rights in the
SPICE ISLANDS mark because of the notification received from the STOP
registration procedure. Respondent’s
registration of <spiceislands.biz>, despite knowledge of Complainant’s
rights, constitutes bad faith registration under STOP Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); 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”); see also 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”).
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 <spiceislands.biz>
domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted because
there are no further IP Claims.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 9, 2002.
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page