Heritage Environmental Services LLC v. International Newcastle
Claim Number: FA0205000114390
Complainant is Heritage Environmental Services LLC, Indianapolis, IN (“Complainant”). Respondent is International Newcastle, Miami, FL (“Respondent”).
The domain name at issue is <heritage.biz>, registered with Iholdings.com.
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.
Tyrus R. Atkinson, Jr., 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 June 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 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 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., 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.
1. Respondent’s <heritage.biz> domain name is identical to Complainant’s registered HERITAGE mark.
2. Respondent does not have any rights or legitimate interests in respect of the <heritage.biz> domain name.
3. Respondent registered the <heritage.biz> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,837,064 for the HERITAGE mark registered on May 17, 1994 for the following class of goods: industrial waste recycling and treatment services. Complainant also holds various international trademark registrations for its HERITAGE mark, including: United Kingdom Reg. No. 1,565,104 registered September 10, 1993 and Mexican Reg. No. 501,104 registered August 16, 1995, among others.
Respondent registered the disputed domain name on March 27, 2002. Complainant’s investigation revealed that Respondent is a “domain brokerage” primarily interested in the sale of the subject domain name. WHOIS records corroborate Complainant’s assertions as Respondent’s address is listed as “FOR SALE at DomainCollection.com.”
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 rights in the HERITAGE mark by successfully registering its mark with the USPTO and other international authorities, and subsequent continuous use.
Respondent’s <heritage.biz> domain name is identical to Complainant’s HERITAGE mark. Respondent’s domain name deviates from Complainant’s mark by the inconsequential addition of the gTLD “.biz.” See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum 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 <heritage.biz> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable 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”).
There is no evidence that suggests Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <heritage.biz> 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 it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).
Respondent’s WHOIS information implies that Respondent’s primary purpose in registering the infringing domain name was to solicit purchase bids in an attempt to profit from the sale of <heritage.biz>. Respondent has yet to develop a purpose for the disputed domain name and has not provided evidence showing any demonstrable preparations to use <heritage.biz> in connection with a bona fide offering of goods or services. Respondent’s sole motivation in registering the subject domain name appears to have been to sell it; thus, Respondent lacks rights and legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
There is no apparent connection between Respondent and the disputed domain name that would suggest Respondent is commonly known as <heritage.biz> pursuant to STOP Policy ¶ 4(c)(iii). Information gleaned from Complainant’s investigation and Respondent’s WHOIS information indicates that Respondent holds no rights or legitimate interests in the domain name. 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 STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent pursued registration of the subject domain name for purposes of resale with no intention of establishing rights or legitimate interests. Respondent’s WHOIS data provides accompanying evidence that Respondent’s motivations in registering <heritage.biz> centered around the domain name’s value dependent on the trademark of others, such as Complainant. Respondent’s registration of an infringing domain name with the primary intent to sell it represents bad faith registration pursuant to STOP Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).
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 should be hereby GRANTED.
Accordingly, it is Ordered that the <heritage.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.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 1, 2002.
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