COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
DECISION
Tropar
Manufacturing Co., Inc. v. TSB a/k/a Takoma Sign & Banner and Lee George
Claim Number: FA0210000126845
The
Complainant is Tropar Manufacturing Co., Inc., Florham Park, NJ
(“Complainant”) represented by Marc P. Misthal, of Gottlieb Rackman
& Reisman, PC. The Respondent
is TSB a/k/a Takoma Sign & Banner and Lee George, Takoma Park,
MD (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The
domain names at issue are <tropar.com>, <tropar.net>,
<tropar.org>, <tropar.biz> and <tropar.info>,
registered with eNom, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”
electronically on October 4, 2002: the Forum received a hard copy of the
Complaint on October 1, 2002.
On
October 8, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
names <tropar.com>, <tropar.net>, <tropar.org>,
<tropar.biz> and <tropar.info> are registered with eNom,
Inc. and that the Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is
bound by the eNom, Inc. registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with the
Restrictions Dispute Resolution Policy (the “RDRP”) as it applies to <tropar.biz>
and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as it
applies to all of the disputed domain names.
On
October 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 29,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the
Uniform Dispute Resolution Policy as supplemented by the Supplemental
Restrictions Dispute Resolution Policy (the “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
November 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
as 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 Rules “to employ reasonably available means calculated to achieve actual
notice to Respondent.” Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Respondent
is not making a bona fide business or commercial use of <tropar.biz>.
The
<tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> domain names are identical to
Complainant's TROPAR mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B. Respondent
No
Response was received.
Complainant
holds Registration Number 1,122,808 for its TROPAR trademark with the United
States Patent and Trademark Office issued on July 24, 1979 covering trophies
and trophy components, wooden plaques and gift awards. Complainant also owns a Canadian Trademark
Registration for TROPAR listed as Canadian Registration Number TMA 525,849, as
well as a Mexican Trademark listed as Registration Number 631,796.
Respondent
registered all the disputed domain names on June 28, 2002. Respondent has used the disputed domain
names in order to host a website that features commentary and other negative
comments about Complainant. Before
registering the disputed domain names Respondent did business with Complainant. Respondent does not have permission or a
license from Complainant to use the TROPAR mark. Respondent offered to sell the disputed domain name registrations
to Complainant within three months of their registration in exchange for
reimbursement of undocumented costs.
Paragraph
15(a) of the Rules instructs this Panel to “decide a Complainant 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.”
Paragraph
4(a) of the UDRP requires that the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Paragraph
4(b) of the RDRP defines “bona fide business or commercial use” as the bona
fide use or bona fide intent to use the domain name or any content software,
materials, graphics or other information thereon, to permit Internet users to
access one or more host computers through the DNS:
(1) to exchange goods, services, or property
of any kind; or
(2) in the ordinary course of trade or
business; or
(3) to facilitate the exchange of goods,
services, information, or property of any kind or the ordinary course of trade
or business.
Respondent’s
registration of <tropar.biz> is subject to the requirements of the
RDRP. The RDRP requires that the domain
name be used in connection with a bona fide business or commercial use. The RDRP paragraph 4(c) provides specific
situations that will not be considered to be a bona fide business or commercial
use for illustrative purposes and are not exclusive.
Respondent
is using the <tropar.biz> domain name in order to divert Internet
users to a website that features criticism about Complainant. Respondent has not used the <tropar.biz>
domain name in relation to any other purpose.
No goods or services have been offered at the website, nor is Respondent
using the domain name to divert Internet users to a website that features goods
or services. Therefore, Respondent is
using the <tropar.biz> domain name exclusively for the expression
of noncommercial ideas. This type of
use is not a bona fide business or commercial use pursuant to RDRP paragraph
4(c). See RDRP ¶ 4(c)(iii)(b)
(stating that using or intent to use a domain name exclusively for the
expression of noncommercial ideas, e.g., registering the domain name in order
to criticize or otherwise express an opinion on the products or services of a
company with no other intended business purpose, does not constitute a bona
fide business or commercial use).
Therefore,
the Panel finds that Respondent has failed to use the <tropar.biz>
domain name in relation to a bona fide business or commercial use and RDRP
Policy paragraph 4(b) has been satisfied.
Because the other domain names in dispute <tropar.com>, <tropar.net>, <tropar.org>, and <tropar.info>
are not “.biz” domain names, and therefore not subject to the RDRP, it is
necessary to proceed and apply the UDRP to the domain names in order to
determine if Respondent has any rights in the disputed domain names. The Panel will also apply the UDRP analysis
to <tropar.biz> as the claim was filed under both Policies.
Complainant
has established that it has rights in the TROPAR mark through registration with
the United States Patent and Trademark Office and continuous use since 1959.
Respondent’s
<tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> domain
names are all identical to Complainant’s TROPAR mark because they incorporate
Complainant’s entire mark and merely add a generic top-level domain. The addition of a generic top-level domain
does not create a distinguishing characteristic because top-level domains are a
required component of every domain name.
Therefore, the addition of “.com,” “.info,” and other generic top-level
domains does not create a domain name capable of overcoming a claim of
identical or confusing similarity pursuant to UDRP ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Blue Sky
Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
The
Panel finds that the disputed domain names are identical to Complainant’s mark
and UDRP ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also 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”).
Furthermore,
based on Respondent’s failure to respond, it is presumed that Respondent lacks
all rights and legitimate interests in the disputed domain names. See 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);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because Respondent never
submitted a Response nor provided the Panel with evidence to suggest
otherwise).
Respondent
is not using the disputed domain names in connection with the sale of any goods
or services because it is using <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> in order to divert Internet users to a website that criticizes
Complainant and attempts to tarnish Complainant’s mark. Therefore, Respondent is not using the
domain names in connection with a bona fide offering of goods or services
pursuant to UDRP ¶ 4(c)(i). See 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 Complainants
HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus
finding no rights or legitimate interests); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
There
is no evidence on record, and Respondent has not come forward with any proof
that it is commonly known as TROPAR or any of the disputed domain names. Therefore, Respondent has failed to
establish that it is has any rights or legitimate interests in the dispute
domain names pursuant to UDRP ¶ 4(c)(ii).
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 Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that Respondent has no rights or legitimate interests in domain
names because it is not commonly known by Complainant’s marks and Respondent
has not used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
Respondent
is using the disputed domain names in order to divert Internet users interested
in Complainant to its own website criticizing Complainant. Respondent’s website features disparaging
comments about Complainant and tarnishes Complainant’s TROPAR mark. Although criticism websites are considered
to be a fair use of a domain name, the use of another entity’s mark to identify
that domain name is not considered to be a fair use giving rise to rights and
legitimate interests. See Monty & Pat Roberts, Inc. v. Keith,
D2000-0299 (WIPO June 9, 2000) (finding that “[T]he Panel does not dispute
Respondent’s right to establish and maintain a website critical of (the
Complainant) . . . . However, the panel does not consider that this gives
Respondent the right to identify itself as Complainant”). When using Complainant’s mark in relation to
a complaint site, the burden of proof rests on Respondent to show that no
alternatives to using Complainant’s mark exist to accomplish its purpose. See
Meijer,
Inc. v. Porksandwich Web Services
FA 97186
(Nat. Arb. Forum July 6,
2001) (finding that it is reasonable to shift the burden of proof to Respondent
to show why no reasonable alternatives exist to use of that particular domain
name that includes the mark or name of Complainant for a criticism site aimed
at Complainant). In this case,
Respondent has registered multiple domain names that are identical to
Complainant’s TROPAR mark, and has failed to respond to the Complaint. Therefore, Respondent has not carried its
burden of proof and the Panel may infer that Respondent does not have any
rights or legitimate interests in the disputed domain names pursuant to UDRP ¶
4(c)(iii). See Baker & Daniels
v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that
because Respondent’s <bakeranddaniels.com> domain name merely
incorporates Complainant’s trademark, without more, it is not protected by the
First Amendment); see also Weekley Homes,
L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding
that establishment of a website containing criticism is not a legitimate use of
the <davidweekleyhome.com> domain name because the disputed domain name
is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).
The
Panel finds that UDRP ¶ 4(a)(ii) has been satisfied.
UDRP
paragraph 4(b) lists four circumstances that can give rise to evidence of bad
faith. The factors listed in this
paragraph are not meant to be exclusive.
Numerous other situations can give rise to evidence of bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”); see
also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly
recognizes that other circumstances can be evidence that a domain name was
registered and is being used in bad faith”).
Respondent
was a customer of Complainant’s before it registered the disputed domain
names. Therefore Respondent had actual
notice of Complainant’s rights in the TROPAR mark. Registration of a domain name that infringes on another’s
trademark rights, despite actual knowledge of these rights, is evidence of bad
faith registration pursuant to UDRP ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); 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).
Furthermore,
Respondent’s registration of numerous domain names in a single instance that
are identical to Complainant’s TROPAR mark is evidence of a bad faith pattern
of conduct. This behavior is evidence
of bad faith registration and use pursuant to UDRP ¶ 4(b)(ii). See Caterpillar
Inc. v. Miyar, FA 95623
(Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence of a pattern of conduct); see
also Harcourt, Inc. v. Fadness,
FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of
registration of several infringing domain names satisfies the burden imposed by
the Policy ¶ 4(b)(ii)).
Therefore,
the Panel finds that UDRP ¶ 4(a)(iii) has been satisfied.
Having satisfied RDRP paragraph 4(b) in
relation to <tropar.biz>, and establishing all three elements
required under the UDRP for each of the disputed domain names, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain names <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 4, 2002
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