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Generic Top Level Domain Name (gTLD) Decisions |
Parametric
Technology Corporation v. Chris Olin
Claim Number: FA0112000102788
The Complainant is Christopher J MacKrell and Parametric Technology Corporation, Needham, MA (“Complainant”) represented by Thomas V Smurzynski, of Lahive & Cockfield Llp. The Respondent is Chris Olin, Saint Charles, IL (“Respondent”).
The domain name at issue is <proengineer.biz>, registered with Register.com.
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 December 8, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.
On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2001 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 16, 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 <proengineer.biz> domain name is identical to Complainant's PRO/ENGINEER mark.
Respondent has no rights or legitimate interests in the <proengineer.biz> domain name.
Respondent registered the <proengineer.biz> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
Since 1987, Complainant has used PRO/ENGINEER trademark in commerce in relation to computer software and computer aided manufacturing. Since 1988, the trademark has been registered with the United States Patent and Trademark Office. The Registration Number is 1,492,046. Complainant asserts that its mark is famous in the CAD/CAM/CAE field.
Respondent registered the disputed domain name on November 19, 2001. Respondent is an individual with no affiliation with Complainant. There are no registrations at the United States Patent and Trademark Office owned by Respondent for a mark incorporating PRO/ENGINEER or PROENGINEER.
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 rights in the PRO/ENGINEER mark because it has used it continuously in commerce since 1987. Furthermore, Complainant has registered the mark on the Principle Register the of United States Patent and Trademark Office.
The <proengineer.biz> domain name is identical to the PRO/ENGINEER mark on the Internet because it is impossible to use a "/" in a domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at “www.pge.com” because the ampersand symbol is not reproducible in a domain name); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Therefore, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no 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 1987, and is the owner of a trademark on the Principle 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 PRO/ENGINEER, or that it owns any trademarks or service marks incorporating the word anywhere in the world. Therefore Respondent has no rights or legitimate interests in the <proengineer.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <proengineer.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).
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).
The Panel finds that STOP Policy 4(a)(ii) has been satisfied.
The <proengineer.biz> domain name is identical to Complainant's PRO/ENGINEER mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <proengineer.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's PROENGINEER marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <proengineer.biz> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Based on the circumstances, it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its PRO/ENGINEER mark in a corresponding domain name. This behavior 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.
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 <proengineer.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: January 30, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/112.html