START-UP TRADEMARK OPPOSITION POLICY

DECISION

TWA Airlines LLC v. Venator Group

Claim Number: FA0204000112520

PARTIES

Complainant is TWA Airlines LLC, DFW Airport, TX (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne Sewell LLP.  Respondent is Venator Group, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <getaway.biz>, registered with Net Searchers International.

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. 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 27, 2002; the Forum received a hard copy of the Complaint on May 1, 2002.

On May 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 23, 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”).

On May 22, 2002, Respondent requested, with Complainant’s consent, an extension with which to file its Response.  Respondent’s request was granted by the Forum on May 23, 2002, extending Respondent’s Response deadline until June 3, 2002.  Respondent did not submit a substantive Response.

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. 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 <getaway.biz> domain name is identical to Complainant’s registered GETAWAY mark.

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

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

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of U.S. Service Mark Reg. No. 930,216 (registered February 29, 1972) for the GETAWAY mark as listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”).

Complainant has a nationwide reputation for quality services and has accumulated substantial public goodwill. In the course of its business, Complainant has acquired extensive rights in numerous names, trademarks and service marks, including the GETAWAY mark. Complainant has continuously used the mark since as early as 1969 in connection with credit card and air transportation services.

Respondent registered the disputed domain name on March 27, 2002 and has yet to develop a use for the domain. Complainant’s investigation of Respondent indicated that Respondent may have trademark rights in NORTHERN GETAWAY, however, no evidence suggests that Respondent has rights in the GETAWAY mark. Respondent is not a licensee of Complainant, nor is Respondent authorized to use Complainant’s mark.

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 GETAWAY mark through registration with the USPTO and subsequent continuous use of the mark since as early as 1969.

Respondent’s <getaway.biz> domain name is identical to Complainant’s GETAWAY mark in form and spelling, thereby satisfying the “identical” requirement of STOP Policy ¶ 4(a)(i).

Accordingly, 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. 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 Respondent’s 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 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).

Complainant has established that it has rights in the disputed domain name because it is the owner of the relevant registered trademark in the United States. Respondent has not come forward to proffer any evidence that it has rights in the GETAWAY mark. Complainant’s investigation revealed that Respondent may have rights in the NORTHERN GETAWAY mark, but not the GETAWAY mark standing alone. Therefore, Respondent has not established rights or legitimate interests in the <getaway.biz> domain name under 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); but see MARCOM HandelsgesmbH v. MARCOM automatisering bv, FA 110854 (Nat. Arb. Forum July 1, 2002) (awarding the domain name <marcom.biz> to Respondent where Complainant had rights in the MARCOM mark but where Respondent had been doing business as “MARCOM automatisering bv” for at least 14 years).

Complainant’s investigation of Respondent’s Northern Getaway business reveals that Respondent may simply be trying to use a shortened form of a phrase in which it may have rights. Respondent uses a domain name that more closely follows Complainant’s trademark rather than its own. This implies that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under STOP Policy ¶ 4(c)(ii). Respondent’s registration of Complainant’s mark in an identical domain name implies that Respondent is diverting Internet users searching for Complainant’s services to its competing website. See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

There is no evidence on the record, nor has Respondent come forward to establish that it is commonly known by the <getaway.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  Moreover, Respondent is not an authorized agent or licensee of Complainant. 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 the 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

Due to Complainant’s registration of its GETAWAY mark on the Principal Register of the USPTO and NeuLevel’s STOP IP claim notification procedure, Respondent was aware of the existence of Complainant’s GETAWAY mark when it registered the disputed domain name. Respondent’s subsequent action of registering the disputed domain name signifies bad faith registration under STOP Policy ¶ 4(a)(iii). 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 Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

           

Furthermore, Respondent’s registration of the domain name at issue prevents Complainant, as owner of the corresponding GETAWAY service mark, from reflecting the mark in the domain name, thereby constituting 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 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”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

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  <getaway.biz> 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., Panelist

Dated: July 15, 2002

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