START-UP TRADEMARK OPPOSITION POLICY

DECISION

Lafarge Road Marking v. Internet Co. N.A.

Claim Number: FA0112000102953

PARTIES

The Complainant is Lafarge Road Marking, Parsippany, NJ, USA (“Complainant”) represented by Beth M. Kotran, of Goodwin Procter LLP.  The Respondent is Internet Co. N.A., Bridgetown, BARBADOS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bjs.biz>, registered with Registrars.com.

PANEL

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.

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 December 14, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.

On December 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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 January 25,2002, 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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bjs.biz> domain name is identical to Complainant's BJS mark.

Respondent has no rights or legitimate interests in the <bjs.biz> domain name.

Respondent registered the <bjs.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the BJS mark in commerce since 1990. Complainant uses the mark in connection with its traffic paint, permanent and temporary removable tape, thermoplastic, and epoxy.  Complainant also produces a product called Thorma-joint a total system approach for bridge expansion joint construction and repair.  The BJS mark is associated with this system, and has been promoted in many national trade journals and a wide variety of media outlets.  These efforts have resulted in considerable goodwill, consumer recognition and distinctiveness in the BJS mark.  Complainant currently owns a United States Trademark Registration for the mark.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is a provider of Internet pornography.  Complainant's investigation revealed that Respondent owns over 1,640 pornographic websites on the Internet including; <sexland.com>, <cybersexstation.com>, <sexinternet.com>, and <cum.cc>.  Complainant was unable to find any reference to a BJS mark on any of the websites, nor was it able to find evidence of trademark or service mark registration under the mark by Respondent.

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 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’s Rights in the Mark

Complainant has established that it has rights in the BJS mark because it has used it continuously in commerce since 1990 and expended considerable sums on the development of the mark's goodwill.  Furthermore, Complainant owns a United States Trademark Registration for the BJS mark.  The <bjs.biz> domain name is identical to the BJS mark.

            The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has not demonstrated 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 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”).

Complainant has established that it has rights in the disputed domain name because it has used the mark in commerce since 1990, and is the owner of  a trademark in the United States.  Respondent has not come forward to offer evidence that it has used the BJS mark in connection with its Internet pornography business, or that it owns any trademarks or service marks incorporating the word anywhere in the world.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <bjs.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

Furthermore, Respondent has not demonstrated any preparations to use the disputed domain name in connection with a bona fide offering of goods or services.  The use of Complainant's federally registered trademark in connection with pornography would not be considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(a)(ii).  See National Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

Complainant has presented evidence that Respondent is commonly known as Internet Co.  There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <bjs.biz> 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 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).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

The <bjs.biz> domain name is identical to Complainant's BJS mark and Internet user may likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <bjs.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv).  Moreover, it can be inferred that Respondent will use the domain name for pornographic material.  The association of another's trademark with pornographic material evidence of bad faith.  See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent threatened to develop the domain name in question into a pornography site).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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 <bjs.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 28, 2002

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