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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