186K.Net v. Paul Amrhein
Claim Number: FA0204000112515
Complainant
is 186K.Net, Boca Raton, FL
(“Complainant”) represented by Michael
I. Santucci, of Roderman Santucci
& Long LLP. Respondent is Paul Amrhein, Herndon, VA (“Respondent”).
The
domain name at issue is <186k.biz>,
registered with Network Solutions, Inc.
The
undersigned certifies that he has acted
independently and impartially and to the best of his or her knowledge, has no
known conflict in serving as Panelist in this proceeding.
James
A. Carmody, 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
May 14, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 3,
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 1, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Carmody, Esq., 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.
A.
Complainant
The
<186K.biz> domain name is identical to Complainant's 186K mark.
Respondent
has no rights or legitimate interests in the <186K.biz> domain
name.
Respondent
registered the <186K.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant is the owner of a service
mark registered on the Principal Register of the United States Patent and
Trademark Office for 186K (Reg. No. 2,452,395). Complainant began using the mark in 1998 in relation to the
hosting of websites and the design of custom computer software. Complainant has also applied for an
additional application towards the same mark to incorporate more services.
Respondent registered the disputed domain
name on March 27, 2002. Upon
Complainant’s information and belief, Respondent has no trademark or service
mark for 186K.
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 demonstrated that it has rights in the 186K mark through registration on
the Principal Register of the United States Patent and Trademark Office. Respondent’s <186K.biz> domain name is identical to Complainant’s
mark.
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”).
There is no evidence on record, nor has
Respondent come forward to establish that it has any trademark or service marks
for 186K. Furthermore, Respondent has
failed to come forward with any evidence that it is commonly known as 186K or
<186K.biz>. Therefore,
Respondent has no rights or legitimate interests in the disputed domain name
pursuant to STOP Policy ¶ 4(c)(i) and ¶ 4(c)(iii), respectively. 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); see also 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).
It can be inferred that Respondent's
planned use of a domain name identical to Complainant's mark is to divert
Internet users interested in Complainant to Respondent's website. The intended use of a domain name identical
to Complainant's mark to divert Internet users to Respondent's website is not
considered a bona fide offering of goods or services pursuant of STOP Policy ¶ 4(c)(ii). See Toronto-Dominion
Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or
legitimate interests where Respondent diverted Complainant’s customers to his
websites); see also 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).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Due to the unique nature of the STOP IP
Claim procedure, Respondent received actual notice of Complainant’s rights in
the <186K.biz> domain name.
Furthermore, due to Complainant’s registration of the mark on the
Principal Register of the United States Patent and Trademark Office Respondent
had constructive notice of Complainant’s rights in the 186K service mark. Therefore, Respondent’s registration of the
<186K.biz> domain name, despite this fact, is evidence of bad
faith registration. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark at the time of registration); see
also 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 <186K.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
James A. Carmody, Esq., Panelist
Dated: July 9, 2002
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