InterTrade Systems Corporation v. Metzler
Claim Number: FA0204000112487
Complainant
is InterTrade Systems Corporation,
Campbell, CA, USA (“Complainant”) represented by Paul E. Thomas, of Pillsbury
Winthrop LLP. Respondent is Metzler, Veringenstadt, GERMANY
(“Respondent”).
The
domain name at issue is <intertrade.biz>,
registered with Dotster.
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. 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 6, 2002.
On
May 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 10,
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 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. 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
<intertrade.biz> domain name is identical to Complainant’s common
law INTERTRADE mark.
Respondent
has no rights or legitimate interests in the <intertrade.biz>
domain name.
Respondent registered the <intertrade.biz>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
Complainant has a registered trademark
with the United States Patent and Trademark Office for INTERTRADE SYSTEMS &
Design (Reg. No. 2,069,076). In
relation to the INTERTRADE SYSTEMS mark, Complainant has a common law mark in
INTERTRADE. Complainant has used the
INTERTRADE mark continuously since 1996 in association with its e-commerce
computer software. Complainant markets
the INTERTRADE mark and associated goods on its <intertrade.com>
website.
Respondent registered the <intertrade.biz>
domain name on March 27, 2002 and has not used or shown plans to use the domain
name.
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 common law rights in the INTERTRADE mark because of its continuous use of
the mark in commerce since 1996 as a source identifier. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also Crazy Creek Prods.,
Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12, 2002)
(finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by demonstrating
its common law rights in the CRAZY CREEK mark).
Respondent’s
<intertrade.biz> domain name contains Complainant’s entire
INTERTRADE mark with the addition of “.biz,” which has no source identifying
significance. Hence, Respondent’s
domain name is identical to Complainant’s mark.
Accordingly,
the Panel finds that STOP 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 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’s investigation failed to
uncover any interests or rights of Respondent in the INTERTRADE mark or the <intertrade.biz>
domain name. Complainant could not find
any Internet use by Respondent associated with the INTERTRADE mark. Also, Respondent has failed to come forward
to offer evidence that supports a finding of rights in a trade or service mark
identical to the <intertrade.biz> domain name. Therefore, Respondent has no 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); see also 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).
Complainant’s investigation revealed that
Respondent does not use the <intertrade.biz> domain name, and more
importantly Respondent has no demonstrable plans to use the domain name. Furthermore, Respondent has not come forward
with evidence supporting eventual use of the domain name. Therefore, Respondent has no rights or
legitimate interests with respect to the domain name pursuant to 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 CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce
requested documentation supported a finding for Complainant under the UDRP).
Complainant could not find any connection
between the INTERTRADE mark and Respondent.
Respondent is not commonly known by the <intertrade.biz>
domain name. 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 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.
Due
to the unique nature of the STOP IP Claim procedure, Respondent had notice of
Complainant’s rights in the INTERTRADE mark.
Hence, Respondent’s registration, despite knowledge of Complainant’s
rights, constitutes bad faith. See
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”).
Complainant asserts that Respondent
registered the domain name in order to prevent it from reflecting the
INTERTRADE mark in a corresponding domain name. Complainant uses <intertrade.com> and is interested in
obtaining the “.biz” domain in order to continue operating its e-commerce
business. Complainant asserts that
Respondent did not register the <intertrade.biz> domain name in
connection with a bona fide commercial purpose. Respondent failed to refute Complainant’s assertions, therefore,
it may be inferred that Respondent registered the domain name in bad faith
under STOP Policy ¶ 4(b)(ii). See
Toyota Jidosha Kabushiki Kaisha v.
S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that
“Registration of a domain name goes further than merely correctly using in an
advertisement the trade mark of another in connection with that other’s goods
or services: it prevents the trade mark owner from reflecting that mark in a
corresponding domain name”); see also Peachtree Software v. Scarponi,
FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy
¶ 4(b)(ii), noting that it was reasonable to conclude Respondent
registered <peachtree.biz> with the intent to prevent Complainant from
reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's
knowledge of Complainant's mark and Respondent's lack of rights or interests in
the mark).
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 <intertrade.biz>
domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: July 15, 2002
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