American Dairy Queen Corp. v. Aly Ramzan
Claim Number: FA0205000114416
Complainant
is American Dairy Queen Corp.,
Minneapolis, MN, USA (“Complainant”).
Respondent is Aly Ramzan,
Karachi, PAKISTAN (“Respondent”).
The
domain name at issue is <dairyqueen.biz>,
registered with Tucows, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits 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 24, 2002; the Forum
received a hard copy of the Complaint on May 28, 2002.
On
May 31, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 20,
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 9, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
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.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
1. Respondent’s <dairyqueen.biz> domain
name is identical to Complainant’s registered DAIRY QUEEN mark.
2. Respondent does not have any rights or
legitimate interests in respect of the <dairyqueen.biz> domain
name.
3. Respondent registered the <dairyqueen.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant established in this
proceeding that it owns U.S. Patent and Trademark Office (“USPTO”) Reg. No.
728,531 for the DAIRY QUEEN mark as listed on the Principal Register on March
13, 1962. Complainant’s “first use” of the DAIRY QUEEN mark is recorded as June
1940. Complainant is the owner of numerous other registered trademarks
incorporating the DAIRY QUEEN mark in over 100 countries worldwide. Currently,
over 5,900 Dairy Queen stores exist and operate throughout the world.
Respondent registered the disputed domain
name on March 27, 2002.
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 as 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 Complainant has rights; and
(2) 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 DAIRY QUEEN mark through registration with
the USPTO and other authorized international organizations, and continuous use
of the mark since 1940.
Respondent’s
<dairyqueen.biz> domain name is identical to Complainant’s DAIRY
QUEEN mark because Respondent’s second level domain incorporates Complainant’s
mark in its entirety. Respondent’s disputed domain name deviates only with the
inconsequential addition of the gTLD “.biz” and the deletion of the space
between the words that comprise Complainant’s DAIRY QUEEN mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent did not submit a Response in this
proceeding. Therefore, the Panel is permitted to presume that Respondent lacks
rights and legitimate interests in the <dairyqueen.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’s claim. 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”).
Respondent has not developed a stated
purpose for the disputed domain name and has not provided any evidence showing
any demonstrable preparations to use <dairyqueen.biz> in
connection with a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). Respondent has the burden of producing credible evidence
that Respondent registered <dairyqueen.biz> for a legitimate
purpose. Respondent’s failure to support the registration with evidence
signifying some right or legitimate interest in the disputed domain name
implies that Respondent has none. Furthermore, any planned use of Complainant’s
famous mark would represent an opportunistic attempt to trade on the goodwill
associated with Complainant’s internationally recognized mark. See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz> by Respondent would be an opportunistic
attempt to attract Internet users via Complainant’s famous GRAMMY mark,
therefore, Respondent had no rights or legitimate interests); see also Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered
the domain name <householdbank.com>, which incorporates Complainant’s
HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus
finding no rights or legitimate interests); see also 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).
No evidence in the record suggests that
Respondent is commonly known by the <dairyqueen.biz> domain name
pursuant to STOP Policy ¶ 4(c)(iii), and nothing shows that Respondent holds
any trademark or service mark that is identical to its infringing domain name
under STOP Policy ¶ 4(c)(i). Respondent’s registration of Complainant’s famous
DAIRY QUEEN mark creates a presumption that Respondent does not hold any rights
or legitimate interests in the <dairyqueen.biz> domain name. See
Nike, Inc. v. B. B. de Boer,
D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests
where one “would be hard pressed to find a person who may show a right or
legitimate interest” in a domain name containing Complainant's distinct and
famous NIKE trademark); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also 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).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has been satisfied.
The criteria specified in ¶ 4(a)(iii) of
the STOP Policy does not represent an exhaustive list of bad faith evidence.
The Panel must take into consideration the totality of circumstances in order
to determine if Respondent registered or used the domain name in bad faith. 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 Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
Due to the nature of NeuLevel’s STOP IP
claim registration procedure and the famous identity of Complainant’s DAIRY
QUEEN mark, Respondent had constructive notice of Complainant’s preexisting
rights in the DAIRY QUEEN mark. Respondent’s subsequent registration of the
infringing <dairyqueen.biz> mark, with knowledge of Complainant’s
rights, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); 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”); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted bad faith).
Any
planned use by Respondent of Complainant’s famous DAIRY QUEEN mark would
represent a bad faith attempt to opportunistically trade on the goodwill and
fame associated with Complainant’s DAIRY QUEEN family of marks. Therefore,
Respondent’s registration represents bad faith under STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the Respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the Complainants
that the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used
the domain name because “It makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”).
Lastly, Respondent registered the
infringing domain name without any rights or legitimate interests. Respondent’s
lack of legitimate interests in the <dairyqueen.biz> domain name
and knowledge of Complainant’s rights implies that Respondent registered the
disputed domain name in order to prevent Complainant from reflecting its mark
in a corresponding domain name. Respondent’s actions represent bad faith
registration under STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802
(WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further
than merely correctly using in an advertisement the trade mark of another in
connection with that other’s goods or services: it prevents the trade mark
owner from reflecting that mark in a corresponding domain name”); see also Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding
bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to
conclude Respondent registered <peachtree.biz> with the intent to prevent
Complainant from reflecting its PEACHTREE mark in a corresponding domain name,
given Respondent's knowledge of Complainant's mark and Respondent's lack of
rights or interests in the mark).
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 <dairyqueen.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.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 23, 2002.
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