Rio
Properties Inc. v. Swarthmore Associates LLC
Claim
Number: FA0205000114387
PARTIES
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.
A. 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.
B. Respondent
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).
DECISION
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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