Cox Communications Inc. v. Common Sense
Enterprises Inc.
Claim Number: FA0207000114751
Complainant
is Cox Communications Inc., Atlanta,
GA (“Complainant”) represented by Mitchell
H. Stabbe, of Dow, Lohnes &
Albertson, PLLC. Respondent is Common Sense Enterprises Inc., Big
Bear Lake, CA (“Respondent”).
The
domain name at issue is <cox.biz>,
registered with PSI-Japan, 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.
The
Honorable Charles K. McCotter, Jr. (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 June 28, 2002; the Forum
received a hard copy of the Complaint on July 1, 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 13, 2002, pursuant to STOP Rule 6(b), the
Forum appointed the
Honorable Charles K. McCotter, Jr. (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
1. Respondent’s <cox.biz> domain
name is identical to Complainant’s registered COX mark.
2. Respondent does not have any rights or
legitimate interests in the <cox.biz> domain name.
3. Respondent registered the <cox.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant and its affiliated entities
have continuously and extensively used the COX mark to identify, advertise and
promote its services since 1898. Complainant owns numerous federal service mark
registrations, as listed on the Principal Register of the U.S. Patent and
Trademark Office (“USPTO”), for marks that include the COX mark for various
media and communications services, including the following marks:
|
MARK |
Reg. No. |
Description of Goods/Services |
|
COX |
2,203,730 |
Domestic
and international distribution of wired and wireless telecommunications
services, namely, personal communication services and wireline telephone
communications services provided through the use of cable television
distribution facilities. |
|
COX
and DESIGN
|
2,005,968 |
Domestic
and international distribution of wired and wireless telecommunication
services, namely, personal communication services and wireline telephone
communications services provided through the use of cable television
distribution facilities; domestic and international distribution of
television programming to cable television systems; cable television
programming. |
|
COX
COMMUNICATIONS and DESIGN
|
2,007,780 |
(Same
as aforementioned description) |
|
COX
ENTERPRISES, INC. |
1,716,534 |
Radio
broadcasting, television broadcasting, and cable transmission services. |
Complainant is one of the nation’s
largest broadband communications companies, and services 6.2 million customers
in more than twenty states. Complainant has invested significant amounts of
resources to promote and advertise its COX marks. Accordingly, Complainant has
developed valuable goodwill and reputation in its COX family of marks. The
marks are famous and are source identification for Complainant’s services.
Respondent registered the disputed domain
name on March 27, 2002. The subject domain name does not currently resolve to
an active website. Complainant’s investigation has revealed that Respondent is
attempting to disguise its identity and disassociate itself from its original
WHOIS registrant entry, Swarthmore Associates, which has registered over 41
domain names containing well-known trademarks of others. Complainant’s
Submission provides evidence that Respondent has altered its WHOIS information
for the <cox.biz> domain name since notice of this dispute.
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
established its rights in the COX mark through registration with the U.S.
Patent and Trademark Office (“USPTO”) and continuous use of the mark in
commerce since 1898.
Respondent’s
<cox.biz> domain name is identical to Complainant’s COX mark, in
which Complainant has rights. Respondent’s domain name reflects Complainant’s
registered mark in its entirety, and only deviates by the inconsequential addition
of the gTLD “.biz.” See AJC Int’l v. None a/k/a
Cox Holdings, FA 109367 (Nat. Arb. Forum
June 11, 2002) (finding that, for the purpose of domain name disputes,
Respondent’s service mark in AJC.COM was equivalent to AJC and thus identical
to <ajc.biz>); see also 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, and Complainant’s assertions have gone
uncontested. Therefore, 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”); 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).
Additionally, when Respondent fails to
submit a Response, and its rights and interests are not apparent to the Panel,
it is presumed that Respondent lacks rights and legitimate interests in the <cox.biz>
domain name pursuant to Policy ¶ 4(a)(ii). See Strum v. Nordic Net
Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in
accordance with Paragraph 14(b) of the Policy, the Panel may draw such
inferences as it considers appropriate, if Respondent fails to comply with the
Panel's requests for information); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, the Respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent has never been authorized by
Complainant to use the COX mark. Complainant’s investigation indicates that
Respondent does not have any trademark registrations or pending applications
reflecting any variation of the <cox.biz> domain name; thus,
Respondent fails to establish rights pursuant to STOP Policy ¶ 4(c)(i).
Complainant’s extensive use of the COX mark in relation to its broadcasting
enterprise, an industry that involves millions of customers exposed to said mark
daily, and its registration on the USPTO’s Principal Register creates the
presumption that Respondent is not commonly known by the disputed domain name
pursuant to STOP Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net> domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959); 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).
Respondent has yet to develop a stated
purpose for the disputed domain name and has not provided any evidence
suggesting any demonstrable preparations to use <cox.biz> in
connection with a bona fide offering of goods or services pursuant to STOP
Policy ¶ 4(c)(ii). In light of Complainant’s evidence supporting its
allegations that Respondent does not have any rights or legitimate interests in
the subject domain name, Respondent has the burden of providing reliable evidence
that it registered <cox.biz> for a legitimate purpose.
Respondent’s failure to support its registration of the infringing domain name
with evidence signifying some right or legitimate interest implies that
Respondent has none. 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 the Respondent to demonstrate that it has 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Paragraph 4(b) of the STOP Policy does
not represent an exhaustive list of bad faith evidence. The Panel may take into
account the totality of circumstances when determining if Respondent’s
registration or use of the domain name constitutes 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).
The circumstances surrounding
Respondent’s registration of Complainant’s mark in its domain name indicate
that Respondent registered the domain name in order to prevent the Complainant
from reflecting its COX mark in the corresponding “.biz” domain name; thus,
Respondent’s preemptive registration of the domain name evidences bad faith
under STOP Policy ¶ 4(b)(ii). Respondent habitually registers famous marks in
infringing domain names, and although a pattern is not required under STOP
Policy ¶ 4(b)(ii), the presence of one reinforces Complainant’s claims. As
noted in the Findings, Respondent has obtained over 41 “.biz” registrations,
many of which incorporate famous trademarks. Unlike a typosquatting case, where
Respondent registers a common misspelling of a famous mark, the present case
involves Complainant’s exact mark reflected in a domain name. It is reasonable
to infer that Complainant would want to reflect its mark in an identical
fashion as the subject domain name. 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).
In addition, Complainant’s USPTO
registration provided presumptive notice to Respondent of Complainant’s rights
in the COX mark. Respondent was given actual notice of Complainant’s rights as
part of the STOP procedure for registering “.biz” domain names. Respondent’s
subsequent registration of the domain name, with knowledge of Complainant’s
rights in the COX mark, further evidences bad faith registration of the <cox.biz>
domain name pursuant to Policy ¶ 4(a)(iii). See Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is constructive
notice of a claim of ownership so as to eliminate any defense of good faith
adoption” pursuant to 15 U.S.C. § 1072); 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 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).
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 <cox.biz> domain name be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 22, 2002
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