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Generic Top Level Domain Name (gTLD) Decisions |
Northwest Airlines Inc. v. Highlands
Claim Number: FA0204000109755
Complainant
is Northwest Airlines Inc., Eagan,
MN (“Complainant”) represented by Joseph
H. Kelly. Respondent is Highlands, Miami, FL (“Respondent).
The
domain name at issue is <northwest.biz>,
registered with Iholdings.com, Inc.
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.
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 18, 2002; the Forum
received a hard copy of the Complaint on
May 17, 2002.
On
May 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 11,
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 10, 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.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<northwest.biz> domain name is identical to Complainant’s NORTHWEST
mark.
Respondent
has no rights or legitimate interests in the <northwest.biz>
domain name.
Respondent
registered the <northwest.biz> domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
Complainant owns a registered trademark
for the NORTHWEST mark, which is registered on the Principal Register of the
United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,721,791). Complainant uses the NORTHWEST mark in
connection with its commercial airline services.
Respondent registered the <northwest.biz>
domain name on March 27, 2002.
Respondent has made no apparent use of the domain name. On the WHOIS registration information page
Respondent listed an Administrative Contact Address as “THIS DOMAIN FOR
SALE.”
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 rights to the NORTHWEST mark through registration on the
Principal Register of the USPTO and subsequent
continuous use.
Respondent’s
<northwest.biz> domain name contains Complainant’s entire
NORTHWEST mark with the inconsequential addition of “.biz.” Therefore, Respondent’s domain name is
identical to Complainant’s mark.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and Respondent’s
failure to respond, the Panel may presume Respondent has no
such 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 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 failed to come forward to
offer any evidence that it is the owner or beneficiary of a trade or service
mark that is
identical to the <northwest.biz> domain name. Furthermore, Complainant’s investigation
revealed that Respondent has no rights in any mark similar to the NORTHWEST
mark. Therefore, Respondent has no
rights or legitimate interests in the 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests under the UDRP where no such right or interest is
immediately apparent to the Panel and Respondent has not come forward to
suggest any right or interest it may possess).
Respondent appears to have registered the
<northwest.biz> domain name for the purpose of selling it given
Respondent’s notification on the WHOIS page that “THIS DOMAIN IS FOR
SALE.” Also, Respondent has failed to
use or even provide any evidence of demonstrable plans to use the domain
name. Therefore, Respondent does not
use the domain name in connection with 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).
Complainant never granted Respondent a
license or permission to use its NORTHWEST mark. Respondent is not commonly known as NORTHWEST or <northwest.biz>. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to STOP Policy ¶
4(c)(iii). 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <northwest.biz>
domain name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
As previously mentioned, Respondent
supplied “THIS DOMAIN IS FOR SALE” as an Administrative Contact Address on the
WHOIS registration
page. Thus, an
inference may be drawn that Respondent registered <northwest.biz>
for the purpose of selling it. Therefore, Respondent’s registration of the <northwest.biz>
domain name constitutes bad faith under STOP Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS
registration information contained the words, “This
is domain name is for
sale”); see also Microsoft Corp.
v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that
Respondent registered the domain name for the purpose of selling it,
as
revealed by the name the Respondent chose for the registrant, “If you want this
domain name, please contact me”).
Furthermore, due to Complainant’s
registration of the NORTHWEST mark on the Principal Register of the USPTO and
the unique nature
of the STOP IP Claim procedure, Respondent had notice of
Complainant’s rights in the NORTHWEST mark upon registering <northwest.biz>. Therefore, Respondent’s registration,
despite knowledge of Complainant’s rights, constitutes bad faith under STOP
Policy ¶ 4(a)(iii). See 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); see also
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”); 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”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
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 <northwest.biz>
domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted because
there are no further IP Claims.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 15, 2002
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