Insurance Services Office Inc. v. WorldWide%20Web%20Shop%2c%20Inc%2e
Claim Number: FA0204000112492
Complainant is Insurance Services Office Inc., New York, NY, USA (“Complainant”) represented by Allison K. Rutledge-Parisi, of Patterson Belknap Webb & Tyler LLP. Respondent is WorldWide%20Web%20Shop%2c%20Inc%2e, Lawrence, PA, USA (“Respondent”).
The domain name at issue is <pcs.biz>, registered with Blueberry Hill Communications, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin 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 8, 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 Sandra Franklin 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 <pcs.biz> domain name is identical to Complainant's common law PCS mark.
Respondent has no rights or legitimate interests in the <pcs.biz> domain name.
Respondent registered the <pcs.biz> domain name in bad faith.
Respondent failed to submit a Response.
Complainant has used the PCS mark in conjunction with its Property Claims Services Newsletter since 1968. Complainant earns approximately $3.5 million worldwide from subscribers to the insurance information newsletter it offers under the PCS mark. Seven hundred insurance companies and 1,500 individuals subscribe to Complainant’s PCS service.
Respondent registered the disputed domain name on March 27, 2002. Respondent offers domain names for sale and various links to different businesses from its <wwwshops.com> website. When approached by Complainant, Respondent offered to sell the domain name for the “right price.”
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 common law rights to the PCS mark through its use of the PCS mark on its newsletter since 1965. Respondent’s <pcs.biz> domain name is identical to Complainant’s PCS mark.
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 to prove that it has a trademark or service mark for PCS or <pcs.biz> anywhere in the world. Therefore, Respondent has not established 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 the fact that Respondent sells domain names from a link on its website it can be inferred that Respondent registered the disputed domain name in order to sell it. Offering a domain name for sale 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 names suggests it has no legitimate use).
Respondent is known to the Panel as “WorldWide%20Web%20Shop%2c%20Inc%2e” not as PCS or <pcs.biz>, and there is no evidence on record to establish that Respondent is commonly known as PCS or <pcs.biz>. Therefore Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); 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 STOP IP Claim procedure Respondent received notice of Complainant’s rights in the PCS mark and <pcs.biz> domain name when it registered <pcs.biz>. Therefore Respondent’s registration of the domain name despite this notice is evidence of bad faith registration. 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”).
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 <pcs.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: July 8, 2002
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