COMMONWEALTH BANK OF AUSTRALIA v. LEGAL SERVICES
Claim Number: FA0205000112637
Complainant is COMMONWEALTH BANK OF AUSTRALIA, Sydney, AUSTRALIA (“Complainant”). Respondent is LEGAL SERVICES, New Orleans, LA, USA (“Respondent”).
The domain name at issue is <colonial.biz>, registered with Intercosmos Media Group.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits 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 May 2, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.
On May 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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 July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson 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.
Complainant seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
The <colonial.biz> domain name is identical to Complainant’s COLONIAL mark. Respondent has no rights or legitimate interest in the <colonial.biz> domain name.
Respondent registered the <colonial.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant merged with Colonial Limited June 2000 and acquired all of Colonial Limited’s proprietary rights, including the registered trademark rights in the COLONIAL family of marks. The specific COLONIAL mark at issue is registered in Australia as Registration Number 716,702.
Complainant extensively uses the COLONIAL mark in association with its banking and financial products and services. The COLONIAL mark has become an important source identifier for Complainant.
Respondent registered the <colonial.biz> domain name on March 27, 2002 and has not established any use, or plans to use, the domain name in connection with a business purpose.
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 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 Complainant has rights; and
(2) 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 be filed only 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 Complainant asserts rights.
Complainant established in this proceeding that it has rights in the COLONIAL mark through registration with the Australian Trade Marks Office and by subsequent continuous use. The domain name registered by Respondent, <colonial.biz>, is identical to Complainant’s COLONIAL mark, but for the inconsequential addition of the top-level domain “.biz.”
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and in view of Respondent’s failure to respond, the Panel may presume Respondent has no such 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 Respondents’ 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 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”).
Complainant could not find any evidence that Respondent owns or is the beneficiary of a trade or service mark identical to <colonial.biz>. Complainant’s investigation included a search of the U.S. Patent and Trademark Office in Respondent’s home country that revealed that Respondent does not have a registered trademark or pending application for the COLONIAL mark. Respondent failed to affirmatively establish rights in a mark identical to <colonial.biz>. Hence, Respondent has no rights or legitimate interests in the 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 Respondent had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Complainant notes that Respondent is not using the domain name and no evidence shows that Respondent plans on using the domain name for a bona fide business purpose. Respondent failed to meet its burden of presenting credible evidence that Respondent plans to use the <colonial.biz> domain name. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); see also 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).
Respondent has no valid registered rights in the COLONIAL mark and is not commonly referred to as <colonial.biz>. This Panel knows Respondent as Legal Services. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(iii). 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <colonial.biz> domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Complainant developed the COLONIAL mark into an important and well-known source identifier for its banking and financial services. Any foreseeable use of the <colonial.biz> domain name by Respondent is likely to cause consumer confusion as to the Complainant’s affiliation. Thus, Respondent’s registration of <colonial.biz> constitutes bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant); see also 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).
Furthermore, Respondent had notice of Complainant’s rights in the COLONIAL mark due to the unique nature of the STOP registration procedure. This notice imparts a heightened duty of care on Respondent to make sure its domain name does not infringe upon another’s mark. Respondent registered the <colonial.biz> domain name in bad faith because it had knowledge of Complainant’s rights prior to registration. See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <colonial.biz> domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 23, 2002.
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