Tropar Manufacturing Co., Inc. v. TSB a/k/a Takoma Sign & Banner and Lee George
Claim Number: FA0210000127701
Complainant is Tropar Manufacturing Co., Inc., Florham Park, NJ (“Complainant”) represented by Marc P. Misthal, of Gottlieb Rackman & Reisman, PC. Respondent is TSB a/k/a Takama Sign & Banner and Lee George, Takoma Park, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tropar.us>, 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.
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 name <tropar.us> is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
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 in compliance with Paragraph 2(a) of the Rules for usTLD 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.
The <tropar.us> domain name is identical to Complainant's TROPAR mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
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 the disputed domain name on June 28, 2002. Respondent is using the disputed domain name in order to divert Internet users to a website that features commentary about Complainant. Before registering the disputed domain name Respondent did business with Complainant. Respondent does not have a license from Complainant to use the TROPAR mark. Complainant’s investigation has revealed that Respondent does not own any trademarks or service marks for TROPAR.
Paragraph 15(a) of the 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 Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy 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 the Respondent is identical or confusingly similar 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
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.us> domain name is identical to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.us.” The addition of a generic top-level domain does not add any distinguishing characteristics to a domain name because it is a required feature in every domain name. Therefore, the addition of a top-level domain name is not relevant in a Policy ¶ 4(a)(i) identical or confusingly similar analysis. 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 World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
There is no evidence on record that Respondent has any trademark or service mark rights for the TROPAR mark. Furthermore, there is no evidence that Respondent is commonly known as TROPAR or <tropar.us>. Based on the content of the disputed domain name it is apparent that Respondent did not register the disputed domain name to reflect its business name or trademark. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) or (iii). See CDW Computer Centers, Inc. v. The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name); see also 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).
Respondent is using the disputed domain name, identical to Complainant’s mark, in order to divert Internet users to a website that offers criticism of Complainant. Respondent is not using the domain name in order to sell any products, or offer any services, however it is attempting to divert Internet users interested in Complainant to Respondent’s website. This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Furthermore, even though the use of a domain name for criticism and public comment is considered to be a fair use, if Respondent is using Complainant’s mark in order to attract Internet users to its website, Respondent has the burden of showing that no other alternatives exist to use of Complainant’s mark to accomplish the same purpose. See Meijer, Inc. v. Porksandwich Web Servs. 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 a domain name that is identical to Complainant’s mark and has failed to submit a Response. Therefore, Respondent has failed to carry its burden and the Panel finds that Respondent has no rights or legitimate interests in the dispute domain name pursuant to Policy ¶ 4(c)(iv). 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”); see also 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 Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent was a customer of Complainant before it registered the disputed domain name it can be inferred that Respondent had actual knowledge of Complainant’s rights in the TROPAR mark. Registration of a domain name, despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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); see also 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").
Furthermore, Respondent registered the subject identical domain name specifically intending to attract Internet users interested in Complainant to its website, which criticizes Complainant. The registration and use of a domain name identical to Complainant’s mark in order tarnish Complainant’s mark is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’s organization on the confusingly similar website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <tropar.us> be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 4, 2002
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