Huge Sportswear Inc. v. International Newcastle
Claim Number: FA0204000112527
Complainant is Huge Sportswear Inc., Salt Lake City, UT (“Complainant”) represented by Berne S. Broadbent, of KIRTON & McCONKIE. Respondent is International Newcastle, Miami, FL (“Respondent”).
The domain name at issue is <huge.biz>, registered with Dotregistrar.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.
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 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 7, 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.
1. Respondent’s <huge.biz> domain name is identical to Complainant’s HUGE mark.
2. Respondent has no rights or legitimate interests in the <huge.biz> domain name.
3. Respondent registered the <huge.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this Proceeding.
Complainant is the owner of U.S. Trademark Reg. No. 2,257,687 for HUGE filed on April 24, 1997 and approved on June 29, 1999.
Respondent registered the contested domain name on March 27, 2002 and has yet to make use of the contested domain name or develop an attached website. Complainant’s research failed to discover any trademark, service mark or trade name registrations of the HUGE mark by the Respondent. Also, the WHOIS database gives Respondent’s address as “FOR SALE at DomainCollection.com” and designates the “name server” as “THIS-DOMAIN-IS-FOR-SALE.COM.”
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 in the HUGE mark by fulfilling trademark registration requirements and subsequent continuous use of the mark in commerce. While one may wonder how the USPTO came to issue a registration for this generic term, even as limited to sporting goods, this Panel will not second guess that determination. Respondent’s <huge.biz> domain name reflects Complainant’s mark in its entirety, thereby fulfilling the “identical” analysis conducted under STOP Policy ¶ 4(a)(i).
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 trademark in the United States. Respondent has not come forward to proffer any evidence that it has rights in the HUGE mark anywhere in the world. Complainant’s investigation failed to locate any trademark, service mark or trade name registrations for the HUGE mark under Respondent’s name. Therefore, Respondent has not established rights or legitimate interests in the <huge.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).
Respondent openly advertises the sale of the disputed domain name in WHOIS data fields, typically used for registration information. Respondent’s actions imply that the contested domain name has no legitimate use under STOP Policy ¶ 4(c)(ii) except to be sold beyond the out-of-pocket expenses incurred because of registration. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use); 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).
There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <huge.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to this Panel as International Newcastle. 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.
As stated in the findings, the WHOIS database lists Respondent’s address as “FOR SALE at DomainCollection.com” and designates the “name server” as “THIS-DOMAIN-IS-FOR-SALE.COM.” These entries in the “.biz” Registry indicate 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 Complainant, for valuable consideration in excess of documented out-of-pocket costs. Thus, Respondent registered the disputed domain name in bad faith under STOP Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself [as DomainForSaleVMI] and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Due to Complainant’s registration of the HUGE 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 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).
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 <huge.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
James A. Carmody, Esq., Panelist
Dated: June 12, 2002
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