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.
A. 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.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page