UMB Financial Corporation v. More Virtual
Agency
Claim Number: FA0205000114421
Complainant
is UMB Financial Corporation, Kansas
City, MO, USA (“Complainant”) represented by Clinton G Newton. Respondent
is More Virtual Agency, Bonn,
GERMANY (“Respondent”).
The
domain name at issue is <scout.biz>,
registered with Key-Systems GMBH.
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.
Judge
Harold Kalina (Ret.) 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 28, 2002; the Forum
received a hard copy of the Complaint on May 28, 2002.
On
June 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 24,
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 17, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (Ret.) 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
The
<scout.biz> domain name is
identical to Complainant's SCOUT mark.
Respondent
has no rights or legitimate interests in the <scout.biz> domain name.
Respondent
registered the <scout.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Since 1994, Complainant and its
affiliated companies have used the SCOUT mark in relation to mutual fund
distribution and investment services.
Complainant and its affiliates are registered in 49 states offering a
full range of brokerage products, including stocks, bonds, mutual funds and
variable annuities, and uses the Internet to promote its securities
services. Complainant has approximately
30,000 customers and uses the SCOUT mark in its advertising campaigns.
Complainant is the owner of three
trademark registrations with the United States Patent and Trademark Office,
consisting of Registration Numbers 1,918,993; 1,978,729; and 2,053,151.
Respondent registered the <scout.biz> domain name on March 27,
2002. Complainant has been unable to
locate any evidence that Respondent owns any trademarks or service marks for
SCOUT anywhere in the world.
Complainant has found evidence that Respondent has registered numerous
domain names and has been the Respondent in numerous domain name disputes. Respondent operates a website at
<virtual-agency.com>. Complainant’s
investigation found that Respondent made no use of the SCOUT mark at its
website.
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 that it has rights in the SCOUT mark through its continuous use
and registration with the United States Patent and Trademark Office.
Respondent’s
<scout.biz> domain name is
identical to Complainant’s SCOUT mark because it uses Complainant’s entire mark
and merely adds the generic top-level domain name “.biz,” which is
inconsequential when determining whether a domain is identical.
The Panel finds that STOP Policy ¶
4(a)(i) has been satisfied.
Furthermore,
when Respondent fails to submit a Response, the Panel is permitted to make all
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”).
Respondent
has not come forward with any evidence, nor is there any evidence on record
that shows that Respondent owns a trademark or service mark for SCOUT. Furthermore, there is no evidence that
Respondent uses the term in relation to its business. Complainant’s investigation of Respondent’s website found no
usage of the SCOUT moniker. Therefore,
Respondent has failed to demonstrate its rights and legitimate interests in the
disputed 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
has registered numerous domain names infringing upon the trademarks of others,
and has been the Respondent in more than one domain name dispute. Based on this information, and Respondent’s
failure to Respond in this proceeding, it can be inferred that Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services pursuant to STOP Policy ¶ 4(c)(ii). See 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).
Respondent
is only known to the Panel as “More Virtual Agency” and there is no evidence to
establish that Respondent is commonly known by any other name. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in <scout.biz> pursuant to STOP Policy ¶
4(c)(iii) because it has failed to show that it is commonly known by SCOUT or
<scout.biz>. See
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); see also 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).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent has engaged in a pattern of
registering domain names that infringe upon the trademarks of others, in order
to benefit from the goodwill of others.
It can be inferred, from this pattern of behavior, that Respondent
registered <scout.biz>
intending to commercially benefit from Complainant’s goodwill. Therefore, Respondent’s registration
represents bad faith pursuant to STOP Policy ¶ 4(b)(iv). See
State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where the Respondent registered the domain name
<bigtex.net> to infringe on the Complainant’s goodwill and attract Internet
users to the Respondent’s website); see
also State Farm Mut. Auto. Ins. Co.
v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the
Respondent registered the domain name <statefarmnews.com> in bad faith
because Respondent intended to use Complainant’s marks to attract the public to
the web site without permission from Complainant).
Furthermore, Respondent’s numerous domain
name registrations that infringe upon the marks of others make it possible to
infer that Respondent registered the disputed domain name in order to sell it
in excess of its out-of-pocket expenses to Complainant or some other
entity. Registration of a domain name
in order to sell, rent, or transfer that registration to another is considered
to be bad faith pursuant to STOP Policy ¶ 4(b)(i). See Xerox Corp. v. Imaging
Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent
registered the domain name in the hope and expectation of being able to sell it
to the Complainant for a sum of money in excess of its out-of-pocket expenses
and/or in the hope of forcing the establishment of a business arrangement
beneficial to the Respondent); see also
Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered
the domain names for sale).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <scout.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Judge
Harold Kalina (Ret.), Panelist
Dated: July 31, 2002
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page