START-UP TRADEMARK OPPOSITION POLICY
Muze Inc. v. H. Grishaver
Claim Number: FA0204000112512
Complainant is Muze Inc., New York, NY, USA (“Complainant”) represented by Robert S. Weisbein, of Darby & Darby P.C. Respondent is H. Grishaver, Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <muze.biz>, registered with Register.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 May 1, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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 10, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
1. Respondent’s <muze.biz> domain name is identical to Complainant’s MUZE mark.
2. Respondent has no rights or legitimate interests in the <muze.biz> domain name.
3. Respondent registered the <muze.biz> domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,758,885 for the MUZE mark as listed on the Principal Register. Complainant registered its MUZE mark on March 16, 1993 and has used the mark in connection with its business of creating information databases regarding music, movies and books for over nine years. Complainant is also the owner of numerous international trademark registrations, including: Australia, Reg. No. 595,631; Germany, Reg. No. 2,054,825; and United Kingdom, Reg. No. 1,527,054; among others. Complainant also conducts operations from numerous domain names incorporating the MUZE trademark, including <muze.com> and <muzebiz.com>. Complainant’s investment in creating and updating its databases totals over $75,000,000.
Respondent registered the disputed domain name on March 27, 2002 and has yet to develop a use for the domain. Respondent is not licensed or authorized to use Complainant’s MUZE mark. Complainant’s investigation revealed that Respondent registered several domain names that are presently located on a domain auction site.
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’s Rights in the Mark
Complainant has established that it has rights in the MUZE mark through registration with the USPTO and subsequent continuous use for the past nine years.
Respondent’s <muze.biz> domain name contains Complainant’s MUZE mark in its entirety. Respondent’s domain name contains no addition of a distinguishing feature or alteration of the existing mark that could classify it as unique and distinct from Complainant’s MUZE mark. Therefore, Respondent’s <muze.biz> is identical to Complainant’s mark.
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent has not come forward to proffer any evidence that it has trademark rights in the MUZE mark. Respondent is not licensed or authorized to use Complainant’s MUZE mark. Therefore, Respondent has no rights or legitimate interests in the <muze.biz> 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).
Respondent’s unauthorized use of the domain name, which incorporates Complainant’s mark, does not establish Respondent’s rights and legitimate interests. The intended use of a domain name identical to Complainant’s mark, which would mislead or confuse Internet users, is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Household Int’l, Inc. v. Cyntom Enter, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Additionally, there is no evidence that Respondent is commonly known by the <muze.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Registration or Use in Bad Faith
Due to the nature of NeuLevel’s STOP registration procedure, Respondent is thought to have been on notice of Complainant’s rights in the MUZE mark. Respondent’s registration of the disputed domain name despite having notice of Complainant’s prior rights evidences bad faith under 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>”).
Additionally, Complainant’s investigation revealed that Respondent registered numerous unrelated domain names, such as <emlak.cc>, <otel.cc> and <kiralik.cc>, among others. All of the domain names resolve to a “domain auction market” where bids are placed for available domain names. Respondent’s pattern of bad faith behavior implies that Respondent has intentions of selling Complainant’s domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
The Panel finds that 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 <muze.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 15, 2002