ITT Manufacturing Enterprises Inc. v.
Swarthmore Associates LLC
Claim Number: FA0204000112509
PARTIES
Complainant
is ITT Manufacturing Enterprises Inc.,
White Plains, NY, USA (“Complainant”) represented by Peter A. Abruzzese, of Kramer
Levin Naftalis & Frankel.
Respondent is Swarthmore
Associates LLC, Pacific Palisades, CA, USA (“Respondent”) represented by Sherry A. Lear, of Law Offices of Sherry Anne Lear.
The
domain name at issue is <itt.biz>,
registered with PSI - Japan.
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.
Jeffrey
M. Samuels, Esq. 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
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 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”).
A
timely Response was received and determined to be complete on May 20, 2002.
Additional
Submissions were received from Complainant May 28, 2002.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Jeffrey M. Samuels
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
ITT Manufacturing Enterprises, Inc. ("ITT") owns at least 770 valid
and subsisting trademark and service mark registrations throughout the world
for marks incorporating the ITT mark.
The mark has been used for well over forty (40) years on or in
connection with a broad variety of goods and services, including telephone and
telecommunications services and equipment.
The ITT mark has been advertised extensively around the world.
Complainant
further alleges that, to the best of its knowledge, Respondent is not the owner
or beneficiary of any trade or service mark consisting in whole or in part of
the designation ITT; that an investigation conducted by an independent company
revealed no use or preparation for use of the ITT mark by Respondent; and that
such report showed no evidence that Respondent, as an individual, business, or
other organization, has at any time been commonly known by the domain name <itt.biz>.
With
respect to evidence of bad faith registration or use, Complainant maintains
that the absence of any evidence of Respondent's rights or legitimate interests
with respect to <itt.biz> strongly suggests a bad faith motive for
the domain name registration. Moreover,
Complainant adds, as part of the .BIZSTOP procedure, Respondent was to be
provided with information relating to ITT's IP Claim demonstrating rights in
the ITT mark and thereby given direct notice of ITT's registrations. Respondent's election to proceed with the
registration of <itt.biz> in the face of knowledge of ITT's rights
indicates, according to Complainant, an intent to prevent ITT from reflecting
its mark in the corresponding <itt.biz> domain name.
In
addition, Complainant notes that a partial search of the .BIZ WHOIS database
indicates that Respondent has obtained at least forty-one (41) additional .BIZ
registrations, including <att.biz>, <cnn.biz>, and <dow.biz>.
Finally,
Complainant contends that unless Respondent is barred from commencing active
use of the domain name in dispute, ITT will be foreclosed from the use of its
ITT mark in the <itt.biz> domain name and that any use of the domain name
by Respondent would be virtually certain to cause confusion as to some
affiliation or connection with Complainant.
B.
Respondent
In
its Response, Respondent argues that it should be considered as having rights
or legitimate interests in respect of the <itt.biz> domain name. In support of such assertion, Respondent indicates that all that is necessary to
establish legitimate interests in respect of a domain name is a business
concept which is not in disaccord with honest practices in commercial
matters. It further maintains that it
does not intend to use "ITT" in a manner that will infringe
Complainant's mark, in that the <itt.biz> site will use the initials
"itt" as an abbreviation for the type of business that will be
conducted on the site. Respondent also
notes that there are numerous third parties that use the acronym or initials
"ITT."
C.
Additional Submissions
Pursuant
to Rule 7 of the National Arbitration Forum Supplemental STOP Rules to the .BIZ
Start-Up Trademark Opposition Policy, Complainant submitted a
"Supplemental Statement."
Complainant, in its additional submission, contends that Respondent
presented no evidence in support of any contention that, before any notice to
it of the dispute, it used, or made demonstrable preparations to use, the
domain name in connection with a bona fide offering of goods or services. The Response, Complainant observes, does not
describe any business concept for using the disputed domain name.
Complainant
also maintains that the STOP Policy does not require proof of trademark
infringement but merely that the domain name is identical to a mark in which
the Complainant has rights.
Upon review of the evidence submitted,
the Panel finds that:
1. Complainant has met its burden of proving
by a preponderance of the competent, credible and admissible evidence that the
domain name in question is identical to a mark in which Complainant has rights;
2. Complainant has met its burden of proving
by a preponderance of the competent, credible and admissible evidence that
Respondent has no rights or legitimate interests in respect of the domain name;
and
3. Complainant has met its burden of proving
by a preponderance of the competent, credible and admissible evidence that the
domain name has been registered or is being used in bad faith.
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.” 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.
The
evidence establishes that, as a result of its longstanding use of the ITT mark
as well as its numerous trademark and service mark registrations for ITT,
Complainant has rights in the ITT mark.
Complainant has established a prima facie
case that Respondent has no rights or legitimate interests in respect of the
domain name and Respondent offered no evidence of any legitimate right or
interest. Respondent does not own a
trade or service mark identical to the domain name (see STOP Policy ¶ 4(c)(i))
and is not commonly known by the domain name. See STOP Policy ¶ 4(c)(iii).
While Respondent presumably relied on
STOP Policy ¶ 4(c)(ii), which provides that a Respondent can establish
legitimate rights or interest if, prior to notice of the dispute, it has used,
or made preparations to use, the domain name in connection with a bona fide
offering of goods or services, no evidence was presented to establish such
prior use. As noted by Complainant, the
Response "gives not even the barest outline of Respondent's business purpose
for the registration."
Further, the fact that third parties may
use the term ITT is simply irrelevant to the issue of whether Respondent has
legitimate rights or interests in the domain name in dispute.
Finally, Respondent's assertion that any use
of the domain name will not infringe Complainant's ITT mark does not establish
any legitimate right or interest. A
STOP proceeding is not equivalent to a trademark infringement suit. The STOP Policy only requires that the
domain name be identical to a mark in which Complainant has rights, not that
the domain name infringes any such mark. See MDU Resources Group, Inc. v. Swarthmore Associates, LLC, FA 102957
(Nat Arb. Forum Feb. 26, 2002).
Under
STOP Policy ¶4(b)(ii), evidence that Respondent has registered the domain name
in order to prevent the Complainant from reflecting the mark in a corresponding
domain
name
"shall be" considered evidence of the registration or use of the
domain name in bad
faith. Here, given Respondent's knowledge of
Complainant's mark and Respondent's lack of legitimate rights or interests, the
Panel concludes that Respondent registered the domain name in order to prevent
Complainant from using the ITT mark in a corresponding domain name. See Peachtree
Software v. Scarpani, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (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 legitimate interests). See also Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum March 4, 2002) (finding bad
faith where Respondent registered the <genelogic.biz> domain name with
full knowledge that his intended business use of the name was in direct
conflict with a registered mark of a known competitor).
Further support for the Panel's finding of bad faith in
this case is found in the fact that Respondent has obtained at least 41
additional .BIZ registrations, many of which incorporate well-known marks. Such evidence would be sufficient to
establish a case of bad faith registration and use under Section 4(b)(ii) of
the UDRP.
The domain name <itt.biz> shall be transferred
from Respondent to Complainant.
Jeffrey M. Samuels
June 17, 2002
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