CEREBOS PACIFIC LIMITED v. MARCO
PUBLISHING CORPORATION
Claim Number: FA0204000112525
Complainant
is CEREBOS PACIFIC LIMITED,
Singapore, SINGAPORE (“Complainant”) represented by Chung Nian Lam, of LEE &
LEE. Respondent is MARCO PUBLISHING CORPORATION, Us, TX,
USA (“Respondent”).
The
domain name at issue is <brands.biz>,
registered with Bondi LLC.
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.
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 May 7, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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 June 20, 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
<brands.biz> domain name is identical to Complainant's BRAND’S
mark.
Respondent
has no rights or legitimate interests in the <brands.biz> domain
name.
Respondent
registered the <brands.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant has registered its BRAND’S
mark in Singapore (Reg. No. 5910/93), Canada (Reg. No. UC027686), Malaysia
(Reg. No. M/25191), Brunei (Reg. No. 19,787), Hong Kong (Reg. No. 8953/93),
Indonesia (Reg. No. 318.579), Taiwan (Reg. No. 302057), Thailand (Reg. No.
24740), Bangladesh (Reg. No. 31027) and Vietnam (Reg. No. 24,526). The BRAND’S mark has been used in relation
to Complainant’s traditional double-boiled chicken soup since the 1920’s in
Singapore and Malaysia. In 1959, the
original company was acquired by Complainant and expanded into greater
Asia. Complainant is now a leading
global foods company listed on the Singapore Exchange and Securities Limited.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not licensed by Complainant to use its BRAND’S mark. Complainant’s investigation has revealed that Respondent has
registered over eighty domain names including: <spas.biz>,
<watches.biz>, <prescriptions.biz>, <etickets.biz>, and
numerous others incorporating generic descriptions of products. Respondent has
also registered domain names that include registered marks such as
<pbs.biz>, and <linux.biz>. Respondent has not begun to use any of
these domain names, or the disputed domain name in relation to a business.
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 established that it has rights to its BRAND’S trademark through
registration throughout Asia. In light
of the default nature of this proceeding and the prior decisions of
registration authorities to ignore the generic nature of the word, “brands”,
that issue will not be tackled for the first time here. The <brands.biz>
domain name is identical to Complainant’s BRAND’S mark because it is impossible
to include an apostrophe in a domain name, therefore the omission of
punctuation is irrelevant when determining whether a domain name is
identical. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
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 the record, and
Respondent has not come forward to establish that it has a trademark or service
mark for BRAND’S or <brands.biz>.
Therefore Respondent has not established that it has rights or
legitimate interests in the disputed 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 is not currently using the
domain name in relation to any business purpose. Moreover, Respondent registered eighty other domain names when it
registered <brands.biz>, therefore it can be inferred that
Respondent registered <brands.biz> and the other domain names in
order to sell them. The sale of a
domain name is not considered to be a bona fide offering of goods and services
pursuant to STOP Policy ¶ 4(c)(ii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain name with the intention of selling the domain name).
Respondent is known to the Panel as Marco
Publishing Corporation and there is no evidence establishing that it is
commonly known as BRAND’S or <brands.biz>. Therefore Respondent has no rights or
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(iii). See 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); see also
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).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on Respondent’s registration of
numerous other domain names at the same time it registered <brands.biz>
it can be inferred that Respondent registered the disputed domain name in order
to sell them. Registration of a domain
name with the intent to sell, rent or transfer it is evidence of bad faith
registration and use pursuant to STOP Policy ¶ 4(b)(i). See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter.,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale).
Furthermore, Respondent’s registration of
a domain name to prevent Complainant from registering domainnames reflecting
its mark is evidence of bad faith registration and use pursuant to STOP Policy
¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the UDRP ¶ 4(b)(ii));
see also Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad
faith pattern of conduct where Respondent registered many domain names
unrelated to its business which infringe on famous marks and websites).
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 and is hereby granted.
Accordingly, it is Ordered that the
domain name <brands.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: June 28, 2002
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