Phoenix Life Insurance Company v. Dart
Container Corporation
Claim Number: FA0207000115080
Complainant
is Phoenix Life Insurance Company,
Hartford, CT (“Complainant”) represented by Carl J. Schiessl.
Respondent is Dart Container
Corporation, Mason, MI (“Respondent”).
The
domain name at issue is <phoenix.biz>,
registered with FunPeas Media Ventures,
LLC.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin 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 July 11, 2002; the Forum
received a hard copy of the Complaint on July 12, 2002.
On
July 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 12,
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 September 4, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Sandra Franklin 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
<phoenix.biz> domain name is identical to Complainant's PHOENIX
mark.
Respondent
has no rights or legitimate interests in the <phoenix.biz> domain
name.
Respondent
registered the <phoenix.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant has operated under the
PHOENIX mark since 1861. Complainant’s
company engages in selling insurance, annuity, investment and trust
services. Complainant’s history has
been compiled in a book entitled A Wealth of History, 150 Years with Phoenix,
published by Greenwich Publishing Group, Inc.
Complainant currently advertises in national and trade magazines under
the PHOENIX mark. In 2001, Complainant
spent over $5.7 million on radio and print advertising. Complainant also sponsors a number of
National Collegiate Athletic Association (“NCAA”) institutions for men’s hockey
and men’s and women’s basketball. As a
result of Complainant’s extensive advertising and sponsorships, the public has
come to identify the PHOENIX mark as being associated with high quality
insurance, annuity, investment, and trust services and products.
Complainant has registered several
service marks on the Principal Register of the United States Patent and
Trademark Office that include the PHOENIX mark, including Registration Numbers
2,399,281 and 1,487,793.
Respondent registered the disputed domain
name on March 27, 2002. Respondent does
not have a license or permission from Complainant to use the PHOENIX mark. Complainant’s investigation has revealed
that the Respondent does business under the name “Dart Container Corporation,”
and uses that name for the bulk of advertising and marketing activities on the
Internet. Complainant has found no
evidence that Respondent owns a trademark or service mark for PHOENIX anywhere
in the world.
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 PHOENIX mark through its longstanding
and continuous use of the mark since 1861.
Furthermore, Complainant has registered its PHOENIX mark on the
Principal Register of the United States Patent and Trademark Office. Respondent’s <phoenix.biz>
domain name is identical to Complainant’s mark because it incorporates
Complainant’s entire mark with no variations.
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”).
Complainant has established that it has
rights in the disputed domain name because it has used its PHOENIX mark in
commerce since 1861, and has registered two PHOENIX service marks on the
Principal Register of the United States Patent and Trademark Office. Respondent has not come forward to offer
evidence that it has used the PHOENIX mark in connection with its business, or
that it owns any trademarks or service marks incorporating the word anywhere in
the world. Therefore Respondent has not
demonstrated any rights or legitimate interests in the <phoenix.biz>
domain name pursuant to STOP Policy ¶ 4(c)(i).
See 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); 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).
Furthermore, based on the longstanding
use and famous nature of Complainant’s mark, any planned use by Respondent of
the <phoenix.biz> domain name, identical to Complainant’s
well-known mark, would be an opportunistic attempt to attract customer’s via
Complainant’s mark and therefore is not considered to be a bona fide offering
of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc.
v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21, 2002) (finding
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence on record, and
Respondent has failed to come forward to establish that it is commonly known as
PHOENIX. Respondent is only known to
the Panel as “Dart Container Corporation.”
Without any evidence that Respondent does business under the PHOENIX
mark, Respondent has not established that it has rights or legitimate interests
in the disputed 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 the 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.
Based on the longstanding use and
well-known nature of Complainant’s PHOENIX mark, as well as the unique nature
of the STOP IP Claim procedure, it can be inferred that Respondent had
knowledge of Complainant’s rights in the mark when it registered <phoenix.biz>. Registration of a domain name identical to
Complainant’s mark, despite knowledge of Complainant’s rights in the mark, is
evidence of bad faith registration pursuant to STOP Policy ¶ 4(a)(iii). See Gehl Co. v. Gehl, FA 102816 (Nat.
Arb. Forum Jan. 30, 2002) (finding that the “long standing use and historic
nature” of Complainant’s GEHL mark put Respondent on notice as to the existence
of the mark, thereby making Respondent aware that it was infringing upon Complainant’s
rights); see also Kuchler Electronics GmbH v. Mancini, DBIZ2002-00005
(WIPO May 31, 2002) (“[f]ailure to make reasonable enquiries that another’s
intellectual property rights were not being infringed by the domain name
registration, supports an inference of bad faith registration”).
Moreover, the disputed domain name is
identical to Complainant’s well-known mark, therefore, any intended use by
Respondent will cause a likelihood of confusion as to the source, sponsorship,
and affiliation of the disputed domain name.
It can be inferred that Respondent intended to use this confusion for
its own commercial gain. This type of
intended use is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia
ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a
domain name identical to Complainant’s mark to be in bad faith under STOP
Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as
to the affiliation between Respondent and Complainant); see also Fluor
Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that,
where Respondent’s <fluor.biz> domain name was identical to Complainant’s
FLUOR mark, Internet users would likely believe an affiliation between Respondent
and Complainant).
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 <phoenix.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Sandra Franklin, Panelist
Dated:
September 10, 2002
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page