William L. Lyon & Associates Inc. v. Makoto Yata
Claim Number: FA0112000103043
The Complainant is William L. Lyon & Associates Inc., Sacramento, CA, (“Complainant”) represented by Kim J. Mueller, of Kim J. Mueller Law Firm. The Respondent is Makoto Yata, Wakayama-si, JAPAN (“Respondent”).
The domain name at issue is <lyon.biz>, registered with Global Media Online Inc.
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 December 14, 2001; the Forum received a hard copy of the Complaint on January 7, 2002.
On January 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 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 March 11, 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.
Respondent’s <lyon.biz> domain name is identical to Complainant’s LYON mark.
Respondent does not have any rights or legitimate interests in <lyon.biz>.
Respondent registered the domain name in bad faith.
Respondent failed to submit a response.
Complainant has established common law rights in LYON by virtue of its continuous use of the mark in commerce since 1946. As early as 1978, Complainant has had a national presence throughout the United States through its distribution of a national magazine of real estate listings. Its national presence expanded to an international presence when it represented the United States Army and Federal Aviation Administration. As a result of this representation, it developed customers in Germany, France, and the United Kingdom. Additionally, Complainant has established legal rights to its LYON service mark through registration of the mark in 1996 within the State of California (Reg. No. 45881).
Moreover, Complainant has developed a presence on the Internet since 1995 in connection with its website at <lyonrealty.com>.
Respondent registered the disputed domain name on November 19, 2001. According to Complainant’s Internet search, this domain name is the only connection Respondent has to the LYON mark.
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 legal rights in its LYON service mark through its registration of the mark in the State of California (Reg. No. 45881) as well as common law rights in LYON through its continuous use of the mark in commerce since 1946.
The <lyon.biz> domain name is identical to Complainant’s LYON service mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
There is no evidence from Complainant’s Internet search, nor has Respondent come forth to provide any evidence that it owns any trade or service marks in anything incorporating the LYON mark. As a result, Respondent has failed to demonstrate rights to or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Moreover, Respondent, known as Makoto Yata, has not provided any evidence indicating that it is commonly known by the LYON mark or the identical domain name, and has therefore, failed to demonstrate rights or legitimate interests in the disputed domain pursuant to STOP Policy ¶ 4(c)(iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has 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 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).
Due to the fame of Complainant’s mark nationally and internationally, as well as its state registration of LYON, Respondent’s registration of a domain name identical to Complainant’s famous mark evidences an intent to trade off of the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website. This behavior indicates Respondent has no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii). 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 incorporated Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers, and thus demonstrating no rights or legitimate interests).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Due to the famous nature of Complainant’s service mark in relation to international and national real estate listings, it can be presumed that Respondent was aware of Complainant’s mark. Respondent’s constructive or actual knowledge of Complainant’s mark at the time of registration of an identical domain name is evidence of bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Additionally, Respondent’s registration of a domain name that is obviously associated with Complainant’s mark indicates that Respondent registered the domain to commercially benefit from the resulting consumer confusion. This is bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <lyon.biz> domain name be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.
Sandra Franklin, Panelist
Dated: March 21, 2002
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