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Generic Top Level Domain Name (gTLD) Decisions |
Insurance Services Office Inc. v.
WorldWide%20Web%20Shop%2c%20Inc%2e
Claim Number: FA0204000112492
Complainant
is Insurance Services Office Inc.,
New York, NY, USA (“Complainant”) represented by Allison K. Rutledge-Parisi, of
Patterson Belknap Webb & Tyler LLP.
Respondent is WorldWide%20Web%20Shop%2c%20Inc%2e,
Lawrence, PA, USA (“Respondent”).
The
domain name at issue is <pcs.biz>,
registered with Blueberry Hill
Communications, 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 April 26, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
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 25, 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.
A.
Complainant
The
<pcs.biz> domain name is identical to Complainant's common law PCS
mark.
Respondent
has no rights or legitimate interests in the <pcs.biz> domain
name.
Respondent
registered the <pcs.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant has used the PCS mark in
conjunction with its Property Claims Services Newsletter since 1968. Complainant earns approximately $3.5 million
worldwide from subscribers to the insurance information newsletter it offers
under the
PCS mark. Seven hundred
insurance companies and 1,500 individuals subscribe to Complainant’s PCS
service.
Respondent registered the disputed domain
name on March 27, 2002. Respondent
offers domain names for sale and various links to different businesses from its
<wwwshops.com> website. When
approached by Complainant, Respondent offered to sell the domain name for the
“right price.”
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 that it has common law rights to the PCS mark through its use
of the PCS mark on its newsletter since
1965.
Respondent’s <pcs.biz> domain name is identical to
Complainant’s PCS mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See 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”).
There
is no evidence on record, and Respondent has not come forward to prove that it
has a trademark or service mark for PCS or <pcs.biz> anywhere in
the world. Therefore, Respondent has
not established that it has rights or legitimate interests in 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).
Based
on the fact that Respondent sells domain names from a link on its website it
can be inferred that Respondent registered the
disputed domain name in order to
sell it. Offering a domain name for
sale is not considered to be a bona fide offering of goods or services pursuant
to STOP Policy ¶ 4(c)(ii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell domain names suggests it has no legitimate use).
Respondent
is known to the Panel as “WorldWide%20Web%20Shop%2c%20Inc%2e” not as PCS or
<pcs.biz>, and there is no evidence on record to establish that
Respondent is commonly known as PCS or <pcs.biz>. Therefore Respondent has not established
that it has rights or legitimate interests in the disputed domain name pursuant
to STOP Policy
¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that Respondent was not commonly known by the domain name
<greatsouthernwood.com>
where Respondent linked the domain name to
<bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in domain name when
Respondent is not known
by the mark).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Based on the STOP IP Claim procedure
Respondent received notice of Complainant’s rights in the PCS mark and <pcs.biz>
domain name when it registered <pcs.biz>. Therefore Respondent’s registration of the
domain name despite this notice is evidence of bad faith registration. See Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the
disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the
domain name
is evidence of bad faith”); 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”).
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
domain name <pcs.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Sandra Franklin, Panelist
Dated: July 8, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1059.html