Concrete.com LLC v. British Cement Association
Claim Number: FA0204000112497
Complainant is Concrete.com LLC, Austin, TX, USA (“Complainant”) represented by Ronnie Klatt. Respondent is British Cement Association, Crowthorne, UNITED KINGDOM (“Respondent”).
The domain name at issue is <concrete.biz>, registered with NetBenefit d/b/a NetNames.
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.
James Alan Crary 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 1, 2002.
On May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 6, 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”).
On June 24, 2002 Mr. Edwin Trout e-mailed the Forum indicating that a Mr. Martin Clarke had recently left the British Cement Association and also indicating that Mr. Clarke “has been ill” for the past three weeks.
Mr. Clarke is listed as the administrative contact for Respondent.
In the e-mail and a subsequent e-mail the British Cement Association described the scope of its operations, the fact that it operates several web sites. It has been in existence since 1987 and through predecessor organizations since 1935, it has a full-time staff, etc.
The Panel concluded that Respondent failed to describe the kind of extraordinary circumstances such as would justify extending the time in which to submit a Response and therefore Respondent was found to be in default of a Response.
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 16, 2002, pursuant to STOP Rule 6(b), the Forum appointed James Alan Crary 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 <concrete.biz> domain name is identical to Complainant’s CONCRETE mark.
Respondent has no rights or legitimate interests in the <concrete.biz> domain name.
Respondent registered the <concrete.biz> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns a registered service mark for CONCRETE in the state of Texas (Reg. No. 60289). Complainant also applied for a trademark with the United States Patent and Trademark Office for the CONCRETE mark, which has been approved and is pending registration. Complainant has been in the concrete business for 16 years. Complainant operates a concrete information website at <concrete.com>.
Respondent registered the <concrete.biz> domain name on March 27, 2002. There is no evidence that shows Respondent has put the domain name to 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 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 CONCRETE mark through registration with the state of Texas and pending registration with the United States Patent and Trademark Office.
Respondent’s <concrete.biz> domain name contains Complainant’s entire mark with the inconsequential addition of “.biz.” Therefore, 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 contends that Respondent has no registered trademark or service mark rights in the <concrete.biz> domain name. Respondent has not come forward to timely offer any evidence that it has such rights. Hence, Respondent has no 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); 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 argues that Respondent is not in the concrete business, therefore, Respondent would have no use for the <concrete.biz> domain name. There is no evidence on the record that shows Respondent has used, or has plans to use, the domain name. In the absence of evidence it is Respondent’s burden to establish a use of the domain name in connection with a bona fide offering of goods or services. Respondent has not come forward to offer any demonstrable preparations to use the domain name, thus, Respondent has not met its burden. Therefore, Respondent has no rights or legitimate interests in the disputed 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).
Respondent is known as British Cement Association and Complainant asserts that Respondent is not in the concrete business. Respondent has not come forward to offer any evidence to the contrary. Also, Respondent has failed to establish that it is commonly referred to as CONCRETE or <concrete.biz>. Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See 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); 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Due to the unique nature of the STOP IP claim procedure, Respondent was on notice of Complainant’s rights in the CONCRETE mark when it registered <concrete.biz>. Respondent’s registration of <concrete.biz>, despite knowledge of Complainant’s rights, constitutes 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”).
Complainant conducts a substantial amount of concrete related business at its <concrete.com> website, which has been operating for nearly four years. Because Respondent’s <concrete.biz> domain name is identical to Complainant’s CONCRETE mark, it can be inferred that any use of <concrete.biz> would attract Internet users, for commercial gain, and create consumer confusion as to the source or affiliation of the website with Complainant’s services. Therefore, Respondent’s domain name was registered in bad faith. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant).
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 <concrete.biz> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 3, 2002
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