START-UP TRADEMARK OPPOSITION POLICY

DECISION

American Savings Bank F.S.B. v. Cades Schutte Fleming & Wright

Claim Number: FA0204000112491

PARTIES

Complainant is American Savings Bank F.S.B., Honolulu, HI (“Complainant”).  Respondent is Cades Schutte Fleming & Wright, Honolulu, HI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <asb.biz>, registered with NameScout.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.

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 April 26, 2002; the Forum received a hard copy of the Complaint on April 26, 2002.

On May 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 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

The <asb.biz> domain name is identical to Complainant's ASB mark.

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

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has a registered service mark in the State of Hawaii for ASB relating to its banking services.  Complainant advertises and promotes its services under the ASB service mark throughout Hawaii.  Complainant currently does business at the <asbhawaii.com>  domain name because another entity registered <asb.com>.

Respondent is Complainant’s counsel.  Due to a mistake in the registration process, the registrar mistakenly registered the disputed domain name in Respondent’s name.  Complainant and Respondent have unsuccessfully attempted to change this situation through other means than this dispute resolution procedure.  Respondent has no intention of using the domain name for any legitimate business reason, nor is it licensed to use Complainant’s trade name in Hawaii.

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 ASB mark through registration and use of its service mark in the State of Hawaii.  The <asb.biz> domain name is identical to Complainant’s ASB mark and therefore 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”).

There is no evidence that Respondent holds any trademarks or service marks for the ASB mark anywhere in the world.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i).  See 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). Furthermore, Respondent is not commonly known as ASB or <asb.biz>.  Therefore, Respondent has not established any rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).   See 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 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).

Upon Complainant’s information and belief, Respondent does not plan to use the disputed domain name in relation to any legitimate business purpose.  There is no evidence that Respondent has a business plan for the domain name.  On the contrary, there is evidence that Respondent registered the domain name for ultimate use by Complainant.  Therefore Respondent is not using the disputed domain name for a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

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

Registration or Use in Bad Faith

Based on the nature of the NeuLevel STOP IP Claim procedure, Respondent was informed of Complainant’s rights in <asb.biz> when it registered the disputed domain name.  Therefore Respondent was on actual notice of Complainant’s rights.  A Respondent’s registration of the disputed domain name despite this notice is evidence of bad faith registration pursuant to STOP Policy ¶ 4(a)(iii).  See 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”).  However, Respondent was acting on behalf of Complainant, the trademark holder and his client, in registering the domain name.  Therefore, the Panel concludes that the registration was not in bad faith.

However, the lack of bad faith in registration does not end the inquiry as the Panel concludes that the intended use of the domain name, i.e. no use or passive holding, constitutes bad faith for the purpose of this proceeding.  Due to a mistake in the registration process, the domain name was registered in Respondent’s name.  Respondent intends to make no use of the domain name and would transfer the domain name to Complainant if possible.  Because Respondent does not intend to use the domain name, Respondent’s intended use of the domain name, passive use, permits an inference of use in bad faith. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug 30, 2000) (passive holding of a domain name permits an inference of registration and use in bad faith).  Making all inferences in favor of Complainant since Respondent has not filed a Response, See Talk City, Inc. v. Robertson, supra, the Panel finds use in bad faith.

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

The Honorable Charles K. McCotter, Jr., Panelist

Dated: July 12, 2002

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