Rio Properties Inc. v. Swarthmore Associates LLC
Claim Number: FA0205000114387
Complainant is Rio Properties Inc., Las Vegas, NV (“Complainant”) represented by David J Stewart, of Alston & Bird LLP. Respondent is Swarthmore Associates LLC, Pacific Palisades, CA (“Respondent”).
The domain name at issue is <rio.biz>, registered with PSI-Japan, Inc.
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.
John J. Upchurch 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 28, 2002.
On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 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”).
A Response was received late and determined to be complete on July 8, 2002.
On July 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed John J. Upchurch as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
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.
1. Respondent acknowledges that the domain name is identical to the “RIO” trademark used by Complainant for casino services.
2. The Respondent domain-name holder should be considered as having rights or legitimate interests in respect of the domain name that is the subject of the complaint. STOP Rule 3(b)(ix)(2); STOP Policy ¶ 4(a)(ii).
3. The domain name was not registered or used in bad faith. STOP Rule 3©(ix)(3); STOP Policy ¶ 4(a)(iii).
The Panel finds that the requested relief should be granted and that the registration of <rio.biz> be transferred to Complainant.
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.”
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 presented evidence that it owns six (6) valid registrations for the RIO mark with the U.S. Patent and Trademark office. Respondent does not dispute this. Neither does Respondent dispute that these registered marks are identical to the domain name in question. Respondent merely contends that Respondent’s use of “rio” does not infringe on the marks of Complainant. The Panel need not decide that issue for the STOP policy only requires that a Complainant prove that the domain name is identical to a trademark or service mark in which the Complainant has rights, not that the domain name infringes on any such trademark.
Under these circumstances, Complainant has met its burden to prove by preponderance of the competent, admissible and credible evidence that the domain name in question is in fact identical to service marks in which Complainant has rights.
The only “evidence” presented by Respondent is the bare assertion that, “Respondent acquired the <rio.biz> domain name for use in conjunction with a rio-themed website.” This allegation is not accompanied by any proofs or discussion. Respondent’s unsupported, self-serving allegations alone are insufficient to establish that the Respondent has rights or legitimate interests in respect to the domain name at issue. See Twentieth Century Fox Film Corp.v. Benstein, FA 102962 (Nat. Arb.Forum Feb. 27, 2002) (Finding that the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Accordingly, it is the finding of the Panel that Respondent has not established rights or legitimate interests in the mark.
Where the subject domain name involves a generic term and there is no direct evidence that Respondent registered the domain name with the intent to the capatilizing on Complainant’s trademark interest, there is no bad faith. However, in this case, the Complainant presented evidence of a previous STOP decision against Respondent, together with sixty-five (65) other .biz domain names that Respondent has registered, including <amex.biz>, <cox.biz>, <csx.biz>, <dial.biz>, <itt.biz>, <aon.biz>, <att.biz>, <cdw.biz>, <cnn.biz>, <dow.biz>, <jdsu.biz>, <ppg.biz>, <dow.biz>, <mgm.biz>, and others. These facts demonstrate that Respondent is clearly engaged in a pattern of conduct in which it registers domain names using the famous trademarks and service marks of others. A pattern of trademark infringement through domain name registration establishes a pattern of bad faith and constitutes bad faith under the STOP Policy. See State Farm Mutual Automobile Insurance Company v. Newnic Corporation, NAF Case No. FA0203000105980) (May 3, 2002). Respondent’s actions constitute bad faith in violation of STOP Policy Section 4(b)(iv).
The domain name <rio.biz> shall be transferred from Respondent to Complainant. Subsequent challenges under the STOP Policy against the domain name shall not be permitted.
John J. Upchurch, Panelist
Dated: August 27,2002
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