Virtual Realty Group Inc. v. Ross LeBel
Claim Number: FA0204000112526
Complainant
is Virtual Realty Group Inc.,
Chicago, IL (“Complainant”). Respondent
is Ross LeBel, Blaine, WA (“Respondent”).
The
domain name at issue is <virtualrealty.biz>,
registered with Gal Communications, Ltd.
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.
Tyrus
R. Atkinson, Jr., 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 30, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
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 6, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, JR., 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
1. Respondent’s <virtualrealty.biz>
domain name is identical to Complainant’s VIRTUAL REALTY mark.
2. Respondent has no rights or legitimate
interests in the <virtualrealty.biz> domain name.
3. Respondent registered the <virtualrealty.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of three
registered VIRTUAL REALTY service marks in which the Complainant has
intellectual property rights, specifically, U.S. Patent and Trademark Office
(USPTO) Reg. Nos. 1,848,862, 2,130,797 and 2,175,922.
Respondent registered the disputed domain
name March 27, 2002 and is not a franchisee or a licensee of Complainant.
Complainant’s investigation has determined that Respondent does not own any
registered trademarks. The Respondent has yet to make use of the contested
domain name or develop an attached website. Also, Complainant discovered that
Respondent apparently registered hundreds, if not thousands, of NeuLevel domain
names all reflecting famous marks.
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.
Accordingly, the Panel finds that
STOP Policy ¶ 4(a)(i) has been satisfied.
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 Respondent’s 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 Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant has established that it has
rights in the disputed domain name because it is the owner of the relevant
registered trademarks in the United States. Respondent has not come forward to
proffer any evidence that it has rights in the VIRTUAL REALTY mark anywhere in
the world. Therefore, Respondent has not established rights or legitimate
interests in the <virtualrealty.biz> domain name under 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).
It can be inferred that Respondent’s
planned use of the domain name identical to Complainant’s mark will be to
divert Internet users interested in Complainant’s services to Respondent’s
website. Therefore, Respondent’s registration of <virtualrealty.biz> is
not in connection with a bona fide offering of goods and services under STOP
Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur
Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use
of another's trademark to attract users to Respondent's domain is not
considered to be a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii)”); see also 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).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <virtualrealty.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to
this Panel as Ross LeBel. 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 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).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
There are unchallenged circumstances
indicating that Respondent registered the domain name primarily for the purpose
of selling, renting or otherwise transferring the domain name registration to
the Complainant, or to a competitor of the Complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs.
Specifically, during the NeuLevel round robin selection of domain names
Respondent secured 144 domain names, including such highly desirable and
valuable marks as: TV GUIDE, CABLEVISION, MOTORSPORT, and HUSTLER, among
others. These marks represent industries in which Respondent has no apparent
legitimate business interest. The only common element found is the high
marketability and monetary value of the domain names. Respondent is careful and
deliberate in the domain names he chooses exhibiting an obvious pattern of
cybersquatting that infringes on the rights of numerous intellectual property
owners; providing further proof that Respondent registered the disputed domain
name in bad faith under STOP Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that a general offer of sale combined with no legitimate use of the
domain name constitutes registration and use in bad faith); see also Xerox Corp. v. Imaging Solution,
D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the
domain name in the hope and expectation of being able to sell it to the
Complainant for a sum of money in excess of its out-of-pocket expenses and/or in
the hope of forcing the establishment of a business arrangement beneficial to
the Respondent).
Due to Complainant’s numerous
registrations of the mark on the Principal Register of the USPTO and NeuLevel’s
STOP IP claim notification procedure, Respondent was constructively aware of
the existence of Complainant’s VIRTUAL REALTY mark when it registered the
disputed domain name. Respondent’s actions signify bad faith registration under
STOP Policy ¶ 4(a)(iii). 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).
Additionally, Respondent’s <virtualrealty.biz>
domain name is identical to Complainant’s established VIRTUAL REALTY mark.
Internet users will believe that there is some affiliation between Respondent
and Complainant. Registration of the <virtualrealty.biz> domain
name is evidence of bad faith use pursuant to STOP Policy ¶ 4(b)(iv) since it
is inevitable that Respondent will attract Internet users seeking Complainant’s
website. See Red Bull GmbH v.
Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected
use of the domain name <redbull.org> would lead people to believe that
the domain name was connected with Complainant, and thus is the equivalent to
bad faith use); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it is “inconceivable that the respondent could
make any active use of the disputed domain names without creating a false
impression of association with the Complainant”).
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 <virtualrealty.biz>
be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2002.
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