START-UP TRADEMARK OPPOSITION POLICY

DECISION

Credit Suisse Group v. Skalf HDP Di Massimo Spada & Co. SAS

Claim Number: FA0205000114364

PARTIES

Complainant is Credit Suisse Group, Zurich, SWITZERLAND (“Complainant”).  Respondent is Skalf HDP Di Massimo Spada & Co. SAS, Bergamo, ITALY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <csg.biz>, registered with Melbourne IT.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) 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 May 21, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.

On May 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 17, 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 July 8, 2002, pursuant to STOP Rule 6(b), the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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

1. Respondent’s <csg.biz> domain name is identical to Complainant’s registered CSG trademark.

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

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

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

FINDINGS

Complainant owns the Swiss Trademark registration (Reg. No. 448,511) for the CSG mark entered on the registry on June 30, 1997. The CSG mark is focused primarily towards representing Complainant’s insurance and financial services. Complainant operates and provides its services from numerous websites, including <csg.com>, <csg.info>, <csg.tv>, and <csg.be>, among others.

Respondent registered the disputed domain name on March 27, 2002. Complainant’s investigation has revealed that Respondent has not shown a purpose for the domain name, nor is it connected to a website.

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 its rights in the CSG mark through registration in Switzerland and subsequent continuous use.

Respondent’s <csg.biz> domain name is identical to Complainant’s CSG mark, only deviating by the addition of the gTLD “.biz” which is inconsequential to the “identical” inquiry. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forom Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <csg.biz> 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, because Respondent failed 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 yet to develop a website or purpose in conjunction with the disputed domain name. The burden of demonstrating rights and legitimate interests in the domain name lies with Respondent. It is Respondent’s obligation to produce reliable and credible evidence that it has demonstrable preparations to use <csg.biz> in connection with a bona fide offering pursuant to STOP Policy ¶ 4(c)(ii). Respondent’s failure to support its registration of the disputed domain name with any indicia of evidence that suggests rights or legitimate interests implies that Respondent has none. 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 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 the Respondent to demonstrate that it has rights or legitimate interests).

There is no evidence or information before this Panel that suggests Respondent is commonly known as <csg.biz> pursuant to STOP Policy ¶ 4(c)(iii). Also, Complainant’s established international presence creates a presumption against Respondent being the owner of a tradename or service mark that is identical to Complainant’s CSG mark pursuant to STOP Policy ¶ 4(c)(i). Complainant’s investigation failed to yield any results of a connection between Respondent and its <csg.biz> domain name. 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 domain name when Respondent is not known by the mark); see also Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark prevented Respondent from being commonly known by <grammy.biz>).

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

Registration or Use in Bad Faith

Due to the nature of NeuLevel’s STOP IP claim registration procedure, Respondent had actual notice of Complainant’s preexisting rights in the CSG mark. A rudimentary search by Respondent on the Internet would also have produced conclusive evidence that Complainant has rights in the CSG mark, as evidenced by its numerous domain name registrations that incorporate the CSG mark. Respondent’s registration of the disputed domain name without a legitimate interest, despite knowledge of Complainant’s preexisting rights in the CSG mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); 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”).

Additionally, Respondent’s registration of a domain name that is identical to Complainant’s mark will inevitably lead to Internet user confusion, resulting in Respondent attracting Internet users searching for Complainant’s financial services. Respondent does not have rights or legitimate interests in the <csg.biz> domain name, which implies Respondent had opportunistic motives in registering the famous mark in a domain name. Respondent’s actions evidence bad faith under STOP Policy ¶ 4(b)(iv). See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant); see also Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant).

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 <csg.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.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: July 11, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1113.html