Pipeline Inspection Company v. Marco
Publishing Corporation
Claim Number: FA0204000112605
Complainant
is Pipeline Inspection Company,
Houston, TX (“Complainant”) represented by Kent
A. Rowald, of Bracewell &
Patterson, LLP. Respondent is Marco Publishing Corporation, Houston,
TX (“Respondent”).
The
domain name at issue is <spy.biz>,
registered with Bondi LLC.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin 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 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
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 Sandra Franklin 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 <spy.biz> domain
name is identical to Complainant’s SPY mark.
2. Respondent has no rights or legitimate
interests in the <spy.biz> domain name.
3. Respondent registered the <spy.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant is the owner of U.S.
Trademark Registration Nos. 1,681,815 (applied for on April 20, 1990 and
registered on April 7, 1992) for the SPY mark in association with “pipeline
leak, coating and film imperfection detectors,” and 2,260,647 (applied for on
January 31, 1998 and registered on July 13, 1999), in association with electric
tracking systems. Both of the registrations are listed on the Principal
Register of the U.S. Patent and Trademark Office (“USPTO”). Complainant began
using the SPY mark no later than May 15, 1956, as shown in Reg. No. 1,681,815.
Respondent registered the disputed domain
name on 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 or service marks in the SPY mark. Also, Complainant
discovered that Respondent apparently registered ninety-three “.biz” domain
names covering a wide gamut of services and reflecting common, albeit valuable,
business terms and trade names.
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 SPY mark anywhere in the world.
Complainant’s investigation failed to yield any evidence that Respondent is
known by the SPY mark. Therefore, Respondent has not established rights or
legitimate interests in the <spy.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 <spy.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 <spy.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to
this Panel as Marco Publishing Corp. 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).
Additionally, Respondent has not offered
any evidence of pursuing a legitimate business undertaking while exhibiting
actions to the contrary. Respondent’s registration of ninety-three “.biz”
domain names with no apparent connection leads to the inference that Respondent
is not offering a legitimate business venture. See Gene Logic Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights
or legitimate interests in the disputed domain name Respondent must establish
with valid evidence “a course of business under the name, or at least
significant preparation for use of the name prior to learning of the
possibility of a conflict” with an IP Claimant).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
There are unrefuted 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 obtained ninety-three domain names, including such highly desirable
and valuable marks as: ENERGY, CABLE, SOCCER, and RENTACAR, 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 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); see also 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).
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 aware of the existence of
Complainant’s SPY mark when it registered the disputed domain name.
Respondent’s subsequent actions of registering the disputed domain name 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 <spy.biz>
domain name is identical to Complainant’s established SPY mark. Internet
users will believe that there is some affiliation between Respondent and
Complainant. Registration of the <spy.biz> domain name is evidence
of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since it is inevitable that
Respondent will attract Internet users seeking Complainant’s products and
services. See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31,
2002) (finding that, where the Respondent’s <fluor.biz> domain name was
identical to the Complainant’s FLUOR mark, Internet users would likely believe
an affiliation between the Respondent and Complainant); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent
registered the domain name <bigtex.net> to infringe on the Complainant’s
goodwill and attract Internet users to the Respondent’s website).
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 <spy.biz> be TRANSFERRED
from Respondent to Complainant and that subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted.
Sandra Franklin, Panelist
Dated: June 18, 2002
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