Boxoffice v. Highlands
Claim Number: FA0204000112483
Complainant
is Boxoffice, Pasadena, CA
(“Complainant”) represented by Kim A
Williamson. Respondent is Highlands, Miami, FL (“Respondent”).
The
domain name at issue is <boxoffice.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.
Judge
Harold Kalina (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 23, 2002.
On
June 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 24,
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 Judge Harold Kalina (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
<boxoffice.biz> domain name is
identical to Complainant's BOXOFFICE mark.
Respondent
has no rights or legitimate interests in the <boxoffice.biz> domain name.
Respondent
registered the <boxoffice.biz>
domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant registered its BOXOFFICE mark
with the United States Patent and Trademark Office as Registration Number
1,896,220 on May 30, 1995.
Complainant’s first use of the mark in commerce was in 1920 in relation
to monthly and weekly publications.
Complainant also operates a website as <boxoffice.com>.
Respondent registered the disputed domain
name on March 27, 2002. Respondent has
listed in its WHOIS information that the domain name is for sale.
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 BOXOFFICE mark through its
registration of the mark with the United States Patent and Trademark
Office. Furthermore, Respondent’s <boxoffice.biz> domain name is
identical to Complainant’s BOXOFFICE mark because uses the entirety of
Complainant’s mark and merely adds the generic top-level domain “.biz.”
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 on record, and
Respondent has not come forward with any evidence to establish that it owns any
trademarks or service marks for the BOXOFFICE mark. Therefore, Respondent has failed to establish 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 WHOIS information
it can be inferred that Respondent registered the disputed domain name in order
to sell it. The sale of a domain name
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 has not come forward with any
evidence to establish that it is commonly known as anything other than
“Highlands.” Therefore Respondent has
failed to establish that it is commonly known as BOXOFFICE or <boxoffice.biz> pursuant to STOP
Policy ¶ 4(c)(iii). See CBS Broadcasting, 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); 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.
It can be inferred from Respondent’s
WHOIS information that it registered the disputed domain name for the primary
purpose of selling, renting or transferring it. Registering a domain name in order to sell it is considered to be
evidence of bad faith registration and use pursuant to STOP Policy ¶
4(b)(i). See Am. 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”);
see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to Complainant amounts to a use of the domain name in bad faith).
Furthermore, based on the unique nature
of the STOP IP Claim procedure Respondent received actual notice of
Complainant’s rights in the <boxoffice.biz>
domain name before it registered the domain name. Respondent’s registration of the disputed domain name despite
this notice 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 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 <boxoffice.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Judge Harold Kalina
(Ret.), Panelist
Dated:
July 30, 2002
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