Credit Suisse Group v. Skalf HDP Di
Massimo Spada & Co. SAS
Claim Number: FA0205000114364
Complainant
is Credit Suisse Group, Zurich,
SWITZERLAND (“Complainant”). Respondent
is Skalf HDP Di Massimo Spada & Co. SAS, Bergamo, ITALY
(“Respondent”).
The
domain name at issue is <csg.biz>,
registered with Melbourne IT.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) 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 21, 2002; the Forum
received a hard copy of the Complaint on May 21, 2002.
On
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 17,
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 8, 2002, pursuant to STOP Rule 6(b), the Forum
appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 <csg.biz> domain
name is identical to Complainant’s registered CSG trademark.
2. Respondent has no rights or legitimate
interests in the <csg.biz> domain name.
3. Respondent registered the <csg.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns the Swiss Trademark
registration (Reg. No. 448,511) for the CSG mark entered on the registry on
June 30, 1997. The CSG mark is focused primarily towards representing
Complainant’s insurance and financial services. Complainant operates and
provides its services from numerous websites, including <csg.com>,
<csg.info>, <csg.tv>, and <csg.be>, among others.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s investigation has revealed that
Respondent has not shown a purpose for the domain name, nor is it connected to
a website.
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 its rights in the CSG mark through registration in Switzerland
and subsequent continuous use.
Respondent’s
<csg.biz> domain name is identical to Complainant’s CSG mark, only
deviating by the addition of the gTLD “.biz” which is inconsequential to the
“identical” inquiry. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN
Solutions Inc. FA 102811 (Nat. Arb. Forom Feb. 8, 2001) (finding that the
<.biz> gTLD in the disputed domain name is not a factor and hence to be
ignored, in determining whether a disputed domain name is identical to the mark
in which Complainant asserts rights).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <csg.biz> 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, because Respondent
failed 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).
Respondent has yet to develop a
website or purpose in conjunction with the disputed domain name. The burden of
demonstrating rights and legitimate interests in the domain name lies with
Respondent. It is Respondent’s obligation to produce reliable and credible
evidence that it has demonstrable preparations to use <csg.biz> in
connection with a bona fide offering pursuant to STOP Policy ¶ 4(c)(ii).
Respondent’s failure to support its registration of the disputed domain name
with any indicia of evidence that suggests rights or legitimate interests
implies that Respondent has none. 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); see also 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).
Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has
been satisfied.
Due to the nature of NeuLevel’s STOP IP
claim registration procedure, Respondent had actual notice of Complainant’s
preexisting rights in the CSG mark. A rudimentary search by Respondent on the
Internet would also have produced conclusive evidence that Complainant has
rights in the CSG mark, as evidenced by its numerous domain name registrations
that incorporate the CSG mark. Respondent’s registration of the disputed domain
name without a legitimate interest, despite knowledge of Complainant’s
preexisting rights in the CSG mark, represents bad faith registration under
STOP Policy ¶ 4(a)(iii). See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); 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”).
Additionally, Respondent’s registration
of a domain name that is identical to Complainant’s mark will inevitably lead
to Internet user confusion, resulting in Respondent attracting Internet users
searching for Complainant’s financial services. Respondent does not have rights
or legitimate interests in the <csg.biz> domain name, which
implies Respondent had opportunistic motives in registering the famous mark in
a domain name. Respondent’s actions evidence bad faith under 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).
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 <csg.biz> domain name be TRANSFERRED
from Respondent to Complainant and that subsequent challenges under the STOP
Policy against this domain name SHALL NOT be permitted.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 11, 2002
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