START-UP TRADEMARK OPPOSITION POLICY

DECISION

Tone Brothers Inc  v. J.W. Saputro

Claim Number: FA0204000112482

PARTIES

Complainant is Tone Brothers Inc., Ankeny, IA, USA (“Complainant”) represented by George O Petty.  Respondent is J.W. Saputro, Bogor, INDONESIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <spiceislands.biz>, registered with Ascio Technologies, Inc.

PANEL

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.

PROCEDURAL HISTORY

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 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 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 timely 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 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.

On June 27, 2002, the Forum notified the Panel that Complainant filed an Additional Submission that was not timely and that was not in compliance with STOP Supplemental Rule #7.  The Panel has not considered this submission.

RELIEF SOUGHT

Complainant seeks transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <spiceislands.biz> domain name is identical to Complainant’s SPICE ISLANDS mark.  Respondent has no rights or legitimate interests in the <spiceislands.biz> domain name.  Respondent registered the <spiceislands.biz> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns multiple registrations for the SPICE ISLANDS mark in various countries, including the United States, Indonesia, United Kingdom, and Chile, among others.  Complainant’s SPICE ISLANDS mark is used in connection with goods in the food industry. 

Respondent registered the <spiceislands.biz> domain name on March 27, 2002 and has yet to develop a use.

DISCUSSION

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 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’s Rights in the Mark

Complainant has established in this proceeding that it has rights in the SPICE ISLANDS mark through worldwide trademark registration.

Respondent’s <spiceislands.biz> domain name contains Complainant’s entire SPICE ISLANDS mark.  Respondent’s domain name adds the inconsequential “.biz” to Complainant’s mark.  Therefore, Respondent’s domain name is identical to Complainant’s mark. 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.  

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and in view of Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have 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).

Complainant asserts that Respondent has no “rights, title or legitimate interests” in the SPICE ISLANDS mark or the <spiceislands.biz> domain name.  Also, Respondent has not come forward to offer any evidence that it is the owner or beneficiary of a trade or service mark that is identical to <spiceislands.biz>.  Therefore, Respondent has not met the requirement of 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); see also 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).

No evidence in the record suggests and Respondent has not come forward to offer any evidence that it has arrangements to use the <spiceislands.biz> domain name in connection with a bona fide offering of goods or services.  Without any evidence to show demonstrable plans to use the domain name, it may be presumed that there are no plans to use the domain name.  Thus, Respondent has not met the burden of STOP Policy ¶ 4(c)(ii).  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 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).

Respondent is known by this Panel only as J.W. Saputro and no evidence shows that Respondent is commonly known as SPICE ISLANDS or <spiceislands.biz>.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to STOP Policy ¶ 4(c)(iii).  See 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in the domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Respondent had, at the very least, constructive notice of Complainant’s rights in the SPICE ISLANDS mark prior to registering the domain name due to Complainant’s trademark registrations in Respondent’s home country, Indonesia.  Furthermore, Respondent had actual notice of Complainant’s rights in the SPICE ISLANDS mark because of the notification received from the STOP registration procedure.  Respondent’s registration of <spiceislands.biz>, despite knowledge of Complainant’s rights, constitutes 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 a commonly known mark at the time of registration); see also 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.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <spiceislands.biz> domain name be TRANSFERRED from Respondent to Complainant.  Furthermore, subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted because there are no further IP Claims.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 9, 2002.

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