START-UP TRADEMARK OPPOSITION POLICY

DECISION

New Pig Corporation v. Highlands a/k/a DomainCollection.com Inc.

Claim Number: FA0204000110849

PARTIES

Complainant is New Pig Corporation, Tipton, PA (“Complainant”) represented by Keith M. Eldred.  Respondent is Highlands a/k/a DomainCollection.com Inc., Miami, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pig.biz>, registered with IHoldings.com d/b/a DotRegistrar.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.

James A. Crary 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 25, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 2, 2002, pursuant to STOP Rule 6(b), the Forum appointed James A. Craryas 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 <pig.biz> domain name is identical to Complainant's PIG mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of three trademarks for PIG on the Principal Register of the United States Patent and Trademark Office, Reg. Nos. 1,429,718; 1,429,719; 2,255,638.  Complainant also owns trademarks for PIG in many countries throughout the world including: Argentina, Australia, Austria, Luxemburg, Belgium, Netherlands, Brazil, Canada, China, Colombia, Denmark, Finland, Greece, Ireland, Israel, Japan, Malaysia, Mexico, Norway, Peru, Portugal, Russia, Slovenia, South Africa, Spain, Sweden, Switzerland, Thailand, Ukraine, UK, and Uruguay.  Complainant’s PIG mark is used in conjunction with cleaning products for industrial workplace settings.  Complainant expends considerable amounts of money annually in advertising and promotion of its products.

Respondent registered the disputed domain name on March 27, 2002.  Respondent’s administrative contact name is listed as “DomainCollection.com.”  Respondent also lists that the domain name is for sale at its billing contact address.

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 to the PIG mark through trademark registration in the United States and abroad.  Furthermore, Complainant has provided ample evidence of secondary meaning associated with its PIG mark in relation to its various industrial cleaning products.  Respondent’s <pig.biz> domain name is identical to Complainant’s PIG 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”).

Considering the generic nature of the term, a strong showing of secondary meaning must be presented by anyone claiming to have a trademark or service mark for PIG.  Complainant has come forward with evidence showing that it has rights to the PIG mark, whereas Respondent has not come forward with any evidence to establish that it has a trademark or service mark for PIG or <pig.biz>.  Therefore, Respondent has not established that it has any 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).

Based on Respondent’s Whois information it can be inferred that Respondent registered the disputed domain name with the intention of selling it.  If Respondent’s use of  the disputed domain name is to put the domain name up for sale, this use is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

There is no evidence on record that suggests Respondent is commonly known by anything other than Highlands or Domaincollection.com.  Therefore, Respondent has no 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 a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration or Use in Bad Faith

It can be inferred that Respondent registered the disputed domain name in order to sell, rent or transfer it based on the Whois information Respondent provided to the Registrar.  Respondent stated that the disputed domain name was for sale on its administrative and billing contact information.  The registration of a domain name for the primary purpose of selling, renting or transferring is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed 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 <pig.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

James A. Crary, Panelist

Dated: July 12, 2002

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