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Generic Top Level Domain Name (gTLD) Decisions |
The Valspar Corporation v. Trendware
Internet Services
Claim Number: FA0204000112595
Complainant
is The Valspar Corporation,
Minneapolis, MN, USA (“Complainant”) represented by Cindy Smith. Respondent is Trendware Internet Services, Hamburg,
GERMANY (“Respondent”).
The
domain name at issue is <eps.biz>,
registered with CORE.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits 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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 30, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
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 June 18, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
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 makes the following
allegations:
The
<eps.biz> domain name is identical to Complainant’s EPS mark. Respondent has no rights or legitimate
interests in the disputed domain name.
Respondent registered the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
Complainant is a multinational coatings
company that has been serving the coatings industry for almost 200 years. Complainant has registered the EPS mark with
the United States Patent and Trademark Office (USPTO) as Reg. No. 2,019,516. Also, Complainant owns registered trademarks
for EPS in Canada (Reg. No. 482,375) and Mexico (Reg. No. 501,324). Complainant first used EPS-branded products
in 1996 and continues to use the EPS mark to identify its products.
Respondent registered the <eps.biz>
domain name on March 27, 2002.
Complainant’s investigation reveals that Respondent has made no use of
the domain name and has no intent to use it.
Respondent conducts business as an Internet service provider.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of 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 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
Complainant has rights; and
(2) 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 Complainant asserts rights.
Complainant
established its rights in the EPS mark through its continuous use and by its
registration of the mark with the United
States Patent and Trademark
Office. Respondent’s <eps.biz>
domain name is identical to Complainant’s EPS mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant demonstrated its rights to
and interests in the EPS mark in this proceeding. Respondent has not submitted a Response in this matter and the
Panel may properly presume Respondent has no rights or interests in
the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to
respond can be construed as an admission that it has no legitimate
interest in
the domain names). Furthermore, when
Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. 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).
Respondent has not provided evidence
showing that it owns or is a beneficiary of a trade or service mark identical
to <eps.biz> pursuant to STOP Policy ¶ 4(c)(i), nor has Respondent
provided evidence that it is commonly known by EPS or <eps.biz>
pursuant to STOP Policy ¶ 4(c)(iii). 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); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name”).
No evidence in this proceeding suggests
and Respondent has not come forward to produce evidence, that Respondent
intends to use <eps.biz> in connection with a bona fide offering
of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See 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 Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint
and had made no
use of the domain name in question).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent registered the <eps.biz>
domain name in bad faith because Respondent was aware of Complainant’s rights
in EPS by virtue of the Principal Register registration
status of the mark with
the USPTO as well as the unique nature of STOP registration procedure and
notification. Respondent registered the
disputed domain name despite constructive notice of Complainant’s rights in the
EPS mark and this constitutes
bad faith infringement upon said mark. See 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”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 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")..
Given Respondent’s constructive knowledge
of Complainant’s rights in the EPS mark, it can be inferred that Respondent
registered the
domain name for the purpose of attracting users to the a website
explicitly trading on Complainant’s goodwill.
Therefore, Respondent’s actions demonstrate bad faith registration
pursuant to STOP Policy ¶ 4(b)(iv). See
State Fair of Texas v. Granbury.com,
FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site
to its own website for commercial gain).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <eps.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. Carolyn Marks
Johnson, Panelist
Dated: July 2, 2002
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