Eurosat Distribution Limited v. Eurostat
Distribution Limited
Claim Number: FA0206000114603
Complainant
is Eurosat Distribution Limited,
London, UNITED KINGDOM (“Complainant”) represented by Michael Carver. Respondent
is Eurostat Distribution Limited,
Wilmington, DE, USA (“Respondent”).
The
domain name at issue is <manhattan.biz>,
registered with, Corporate Domains, 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.
Hon.
Ralph Yachnin 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 June 13, 2002; the Forum
received a hard copy of the Complaint on June 17, 2002.
On
July 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 22,
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 August 14,2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Ralph Yachnin
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
<manhattan.biz> domain name is identical to Complainant’s
MANHATTAN mark.
Respondent
has no rights or legitimate interests in the <manhattan.biz>
domain name.
Respondent
registered the <manhattan.biz> domain name in bad faith.
B.
Respondent
Respondent did not submit a Response in
this proceeding.
Complainant owns a European Union
Community Trade Mark for the MANHATTAN mark, registered on June 6, 1996 (Reg.
No. E264119). Complainant uses the mark
for satellite receivers and other receiving devices for radio and
television.
Respondent registered the <manhattan.biz>
domain name on March 27, 2002.
Respondent has not used the domain name in connection with any active
purpose. Complainant discovered that
Respondent’s contact name on the WHOIS information page is
greg.haven@enom.com. Further research
by Complainant discovered that Respondent’s Enom.com connection links
Respondent to “Domain Registration and Services.” Enom.com is a company known for selling and marketing domain name
registrations.
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 MANHATTAN mark through proof of registration with
the European Union and use of the mark in commerce in connection with its
satellite receiving products and services.
Respondent’s
<manhattan.biz> domain name contains Complainant’s entire
MANHATTAN mark with the inconsequential addition of the gTLD “.biz.” Previous Panels have consistently held that
“.biz” is not a distinguishing feature capable of separating a domain name from
the mark in question. Therefore,
Respondent’s domain name is identical to Complainant’s mark. See Princeton Linear Assoc., Inc.
v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forom 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); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to answer
Complainant’s allegations that Respondent has no rights or legitimate interests
in the <manhattan.biz> domain name. Since Respondent did not reply in this proceeding, it may be
inferred that Respondent has no rights or legitimate interests in the domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Furthermore, due to the lack of response
by Respondent, all reasonable inferences may be drawn in favor of the 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”); see also
Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Complainant maintains that Respondent has
no trademark or service mark rights that are identical to the <manhattan.biz>
domain name. Respondent has not come
forward to assert that it holds rights in any marks that consist of the domain
name. Therefore, Respondent has no
rights or legitimate interests 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); see also Aetna Inc. v. Vitty Inc., FA 110804 (Nat.
Arb. Forum June 17, 2002) (finding that when Respondent fails to come forward
with a Response, the Panel may infer that Respondent does not have any trademark
or service marks identical to the disputed domain name and, therefore, has no
rights or legitimate interests in the disputed domain name).
Complainant asserts that Respondent has
no rights or legitimate interests and has not demonstrated a planned use in the
<manhattan.biz> domain name.
Complainant argues that since Respondent is associated with Enom.com, a
business that trades in domain name registrations, Respondent registered the
domain name for the purpose of selling its registration rights to a party that
holds a legitimate interest in it, such as Complainant. Complainant’s allegations shift the burden
to Respondent to establish rights and legitimate interests in the domain name. Since Respondent did not respond to the
aforementioned allegations, the Panel finds that Respondent has failed to
affirmatively demonstrate its rights or legitimate interests in the <manhattan.biz>
domain name pursuant to STOP Policy ¶ 4(c)(ii). See Woolworths plc.
v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence
of preparation to use the domain name for a legitimate purpose, the burden of
proof lies with Respondent to demonstrate that it has rights or legitimate
interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests in respect of the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Finally, Respondent is not commonly known
by the <manhattan.biz> domain name or any similar moniker. Complainant discovered that Respondent is
associated with Enom.com, a business that has no intellectual property rights
in anything parallel to the MANHATTAN mark.
Therefore, Respondent has no rights or legitimate interests in the
subject domain name pursuant to STOP Policy ¶ 4(c)(iii). See 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 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).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s unrefuted assertion about
Respondent’s connection with Enom.com permits the inference that Respondent
registered the domain name primarily for the purpose of selling it to an entity
with valid, legitimate interests in the domain name. However, because of the unique nature of the STOP registration
procedure, Respondent was put on notice of Complainant’s rights. Therefore, due to Respondent’s awareness of
Complainant’s interests in the MANHATTAN mark, it is reasonable to infer that
Complainant was the target of Respondent’s illegitimate intent. The Panel so finds that Respondent
registered the <manhattan.biz> domain name in bad faith under STOP
Policy ¶ 4(b)(i). See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”); see also Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002)
(“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it
registered the disputed domain name, because Respondent received notice of
Complainant’s IP Claim. Respondent’s
registration of the disputed domain name despite this notice when Respondent
had no right or legitimate interest in the domain name is evidence of bad
faith”); see also Euromarket
Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000)
(finding “the manner in which the Respondent chose to identify itself and its
administrative and billing contacts both conceals its identity and unmistakably
conveys its intention, from the date of the registration, to sell rather than
make any use of the disputed domain name”).
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 <manhattan.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 15, 2001
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