Tone Brothers, Inc. v. Satisfactory GmbH
i.G.
Claim Number: FA0204000112581
Complainant
is Tone Brothers, Inc., Ankeny, IA,
USA (“Complainant”) represented by George
Petty. Respondent is Satisfactory GmbH i.G., Trebel,
GERMANY (“Respondent”).
The
domain name at issue is <tones.biz>,
registered with Schlund + Partner AG.
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. Crary 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 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 23,
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 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Crary 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
Complainant asserts that it owns a trademark for TONE’S.
B.
Respondent
Respondent
failed to submit a Response.
Complainant has submitted evidence that
it is the owner of a trademark for TONE’S in Canada, Chile, Colombia, Ecuador,
Panama, Taiwan, and the United States.
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 TONE’S mark through registration of
the mark internationally. Respondent’s
<tones.biz> domain name is identical to Complainant’s TONE’S mark
because the omission of punctuation in a domain name is irrelevant when
considering whether a domain name is identical. See Chi-Chi’s Inc.
v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain
name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark,
despite the omission of the apostrophe and hyphen from the mark).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant
has failed to assert any grounds upon which to infer that Respondent has no
rights or legitimate interests in the disputed domain name. Furthermore,
Complainant has failed to allege any bad faith on the part of Respondent, or
present any evidence in this regard. As
a result, the Panel is unable to find that Complainant has satisfied STOP
Policy ¶ ¶ 4(a)(ii) & 4(a)(iii).
Having
failed to establish two elements required under the Start-up Trademark
Opposition Policy, the Panel concludes that relief shall be hereby denied.
Accordingly, it is Ordered that the
domain name Complaint be dismissed.
James A. Crary, Panelist
Dated: June 15, 2002
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