Leader Technologies LLC v. Long
Claim Number: FA0204000112499
Complainant
is Leader Technologies LLC,
Westerville, OH (“Complainant”) represented by Michael T. McKibben.
Respondent is Long, Baltimore,
MD (“Respondent”).
The
domain name at issue is <leader.biz>,
registered with Dotster.
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 27, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 31, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 20,
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 19, 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.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
The
<leader.biz> domain name is identical to Complainant's LEADER
mark.
Respondent
has no rights or legitimate interests in the <leader.biz> domain
name.
Respondent
registered the <leader.biz> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant has used the LEADER mark in
commerce since 2000 in relation to computer and software products. Complainant has filed a service mark
application with the United States Patent and Trademark Office for the mark
(Serial Number 76270734).
Respondent registered the <leader.biz>
domain name on March 27, 2002.
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 the Complainant
asserts rights.
Complainant
established in this proceeding that it has rights to the LEADER mark through
its continuous use in commerce since 2000 and by its pending service mark
application with the United States Patent and Trademark Office. The STOP Policy is broad in scope in that
the reference to a trademark or service mark in which the Complainant has
rights means that ownership of a registered mark is not required–unregistered
or common law trademark or service mark rights will suffice to support a domain
name Complaint under the STOP Policy. See
generally McCarthy on Trademarks and
Unfair Competition, § 25:74.2, Vol. 4 (2000). See also SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
UDRP Rules do not require that the Complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending
trademark applications).
Complainant’s LEADER mark is identical to Respondent’s
<leader.biz> domain name because the domain name incorporates the
entirety of Complainant’s mark and merely adds the inconsequential 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”).
No
evidence in the record suggests and Respondent has not come forward to submit
any evidence that suggests that Respondent owns any trademarks or service marks
for LEADER anywhere in the world.
Therefore, Respondent has failed to demonstrate that it has rights or
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(i). Furthermore, Respondent
submitted no evidence that it does business under the LEADER mark or that
Respondent is commonly known by LEADER or <leader.biz>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the <leader.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). 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 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).
Furthermore,
Respondent has the burden of establishing that it is using, or plans to use the
disputed domain name in relation to a bona fide business purpose. Respondent has failed to submit any evidence
to the Panel and therefore it is presumed that Respondent is not using the <leader.biz>
domain name in connection with a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii). See
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); see also 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).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Based on the unique nature of the STOP IP
Claim procedure Respondent was on notice as to Complainant’s rights in the <leader.biz>
domain name when it registered the domain.
Respondent’s registration of the domain name, despite this notice, is
evidence of bad faith pursuant STOP Policy ¶ 4(a)(iii). 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 <leader.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 2, 2002.
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