International Mill Service Inc. v.
Webwide Internet Communication GmbH
Claim Number: FA0206000114464
Complainant
is International Mill Service Inc.,
Horsham, PA, USA (“Complainant”).
Respondent is Webwide Internet
Communication GmbH, Durmersheim, GERMANY (“Respondent”).
The
domain name at issue is <ims.biz>,
registered with Key-Systems GMBH.
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 4, 2002; the Forum
received a hard copy of the Complaint on June 5, 2002.
On
June 27, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 17,
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 July 23, 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
1. Respondent’s <ims.biz> domain
name is identical to Complainant’s registered IMS mark.
2. Respondent does not have any rights or
legitimate interests in the <ims.biz> domain name.
3. Respondent registered the <ims.biz> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, International Mill Service,
Inc., owns service marks (Reg. Nos. 1,237,680 and 1,237,681) with the U.S.
Patent and Trademark Office (“USPTO”) for the IMS mark and a stylized IMS logo.
Complainant’s IMS marks were listed on the Principal Register of the USPTO on
May 10, 1983 and are used to designate Complainant’s consultation, engineering
and design services relating to metal recovery for steel producing mills. Since
1969, Complainant has been using the IMS service mark to provide a wide variety
of services to the steel industry.
Respondent registered the <ims.biz>
domain name on March 27, 2002 through NeuLevel’s STOP Registration
procedure. Respondent has yet to produce a stated purpose for the domain name,
or develop a website in connection with the <ims.biz> domain name.
Complainant’s investigation revealed that Respondent, WebWide InterNet
Communication Gmbh, is a German corporation involved in professional domain
name hosting and reselling.
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 IMS mark through registration with the USPTO and
continuous use of the mark since 1969.
Respondent’s
<ims.biz> domain name is identical to Complainant’s IMS mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety,
mirroring it in spelling and form. The addition of the gTLD “.biz” fails to
distinguish Respondent’s mark as unique and separate from the second level
domain that reflects Complainant’s IMS mark. See 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); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
Accordingly,
the Panel determines that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <ims.biz> domain name. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent
has yet to develop a stated purpose in connection with the disputed domain
name, and has not provided any information suggesting any demonstrable
preparations to use <ims.biz> in connection with a bona fide
offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). Respondent
has the burden of producing credible evidence rebutting Complainant’s
allegations that it registered <ims.biz> for a legitimate purpose.
Furthermore, Complainant provides uncontested evidence that Respondent
specializes in domain name hosting and selling. Respondent’s primary motive in
acquiring the subject domain name was to monetarily benefit from its sale;
thus, Respondent lacks rights and legitimate interests in <ims.biz>.
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); see also
Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
Based
on WHOIS data and Complainant’s unrefuted information that Respondent operates
under the moniker “Webwide Internet Communication” and is involved in the
business of selling domain names, Respondent has no apparent connection to the <ims.biz>
domain name pursuant to STOP Policy ¶ 4(c)(iii). Complainant also failed to
locate any information that would suggest Respondent is the owner or
beneficiary of a trademark or service mark that is identical to the disputed
domain name 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 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); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
As stated, Complainant has provided this
Panel with uncontested evidence that Respondent is involved primarily in the
business of hosting and selling domain names, presumably to the highest bidder.
By its nature and definition of incorporation, it can be inferred that
Respondent is offering the subject <ims.biz> domain name for sale;
thus, Respondent’s behavior represents bad faith registration under STOP Policy
¶ 4(b)(i). See Banca Popolare
Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad
faith where the Respondent offered the domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to Complainant amounts to a use of the domain
name in bad faith).
The criterion specified in ¶ 4(b) of the
STOP Policy does not represent an exhaustive list of bad faith evidence. The
Panel must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in 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).
Due to the nature of NeuLevel’s STOP IP
Claim registration procedure, Respondent had actual notice of Complainant’s
preexisting rights in the IMS mark. Respondent’s subsequent registration of the
infringing <ims.biz> domain name without rights or legitimate
interests, and despite knowledge of Complainant’s preexisting rights,
represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark at the time of registration); see
also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
(finding that the unique nature of the STOP Policy and the notice given to
Respondent regarding existing IP Claims identical to its chosen domain name
precluded good faith registration of <genelogic.biz> when Respondent
registered it with “full knowledge that his intended business use of this
domain name was in direct conflict with a registered trademark of a known
competitor in exactly the same field of business”).
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 <ims.biz>
domain name be TRANSFERRED from Respondent to Complainant, and that
subsequent challenges under the STOP Policy against this domain name SHALL NOT
be permitted.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: July 24, 2002
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