START-UP TRADEMARK OPPOSITION POLICY

DECISION

Pennsylvania Business Bank v. Success Bank Co., Ltd.

Claim Number: FA0112000102818

PARTIES

The Complainant is Pennsylvania Business Bank, Philadelphia, PA, USA (“Complainant”) represented by Jeffrey L. Eichen, of Schnader, Harrison, Segal & Lewis, LLP.  The Respondent is Success Bank Co., Ltd., Seoul, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bizbank.biz>, registered with Gabia, Inc.

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 11, 2001; the Forum received a hard copy of the Complaint on .

On December 18, 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 <bizbank.biz> domain name is identical to Complainant's BIZBANK mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

The mark BIZBANK was used by Complainant's predecessor in interest since 1989.  In April 2001 the mark and all the goodwill associated with it was transferred to Complainant.  The mark is United States Patent and Trademark Registration Number 1,646,228.  The mark has been used in commerce since 1989 in relation to business management consultation services and financial analysis and consulting services.

Complainant uses the mark in relation to its two web address <bizbank.org> and <pabizbank.com>.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is known as Success Bank.  Respondent's website makes no mention of future use of the <bizbank.biz> domain.  Complainant's research has not found any evidence of trademarks or service marks owned 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 demonstrated through use in commerce and trademark registration that it has rights in the BIZBANK mark.  The <bizbank.biz> domain name is identical to the BIZBANK 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, and is the owner of  a trademark on the Register of the United States Patent and Trademark Office.  Respondent has not come forward to offer evidence that it has common law rights in the mark BIZBANK, 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 <bizbank.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

It can be inferred that Respondent's planned use of a domain name identical to Complainant's mark is to divert Internet users interested in Complainant to Respondent's website.  The intended use of a domain name identical to Complainant's mark to divert Internet users to Respondent's website  is not considered a bona fide offering of goods or services pursuant of  STOP Policy ¶ 4(c)(ii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also 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 incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Respondent is commonly known by Success Bank, not by <bizbank.biz>.  Respondent has not presented any evidence to refute this, and therefore the Panel cannot find that Respondent is commonly known by <bizbank.biz>.  Therefore Respondent does not have 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.

Registration or Use in Bad Faith

Based on the similarity of Complainant's and Respondent's businesses it is reasonable to assume that they are competitors.  As a result, it can be inferred that Respondent registered the disputed domain name primarily in order to disrupt Complainant's business.  Registration of a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iii).  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of the Complainant, a competitor of the Respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Furthermore, it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its BIZBANK mark in a corresponding domain name.  This type of conduct is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name [by Respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).

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 <bizbank.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

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/111.html