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Generic Top Level Domain Name (gTLD) Decisions |
Eclat Textile Co. Ltd. v. More Virtual
Agency
Claim Number: FA0204000110811
Complainant
is Eclat Textile Co. Ltd., Taipei,
TAIWAN (“Complainant”). Respondent is More Virtual Agency, Bonn, GERMANY
(“Respondent”).
The
domain name at issue is <bodycare.biz>,
registered with Key-Systems GMBH.
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.
Judge
Harold Kalina (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 25, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 4,
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 9, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (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
1. Respondent’s <bodycare.biz> domain name is identical to Complainant’s
registered BODYCARE mark.
2. Respondent has no rights or legitimate
interests in the <bodycare.biz>
domain name.
3. Respondent registered the <bodycare.biz> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant holds registrations for its
BODYCARE mark in numerous countries, more specifically: Reg. No. 620782
registered on February
15, 2001 in New Zealand; Reg. No. 847001 registered on
December 21, 2001 in Australia; and, Reg. No. B11792 registered on October
12,
2001 in Hong Kong, among others.
Respondent registered the disputed domain
name on March 27, 2002 and has yet to develop a purpose for the domain.
Respondent is not
licensed or authorized to use Complainant’s BODYCARE mark.
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 its rights in the BODYCARE mark through international
registration and subsequent continuous use.
Respondent’s
<bodycare.biz> domain name is
identical to Complainant’s BODYCARE mark. Respondent’s disputed domain name
mirrors Complainant’s mark in its entirety,
reflecting identical spelling and
form.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to present a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate
interests in the <bodycare.biz>
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, because Respondent
failed 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”).
It is not apparent to the Panel that
Respondent has rights in the <bodycare.biz>
domain name. Respondent has not come forward to proffer any evidence that
it has rights or legitimate interests in the BODYCARE mark
anywhere in the
world. Therefore, Respondent has failed to establish rights in the domain name
pursuant to the threshold established
by 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).
Respondent has yet to develop a website
or purpose in conjunction with the disputed domain name. The burden of proof
lies with Respondent
in producing reliable and credible evidence that
Respondent registered the disputed domain name for a legitimate purpose, since
one
is not apparent to the Panel. Respondent’s failure to support its
registration by showing it has demonstrable preparations to use
the domain in
connection with a bona fide offering of goods or services implies that
Respondent has no rights or legitimate interests
under 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
Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that
absent evidence of preparation to use the domain name for a legitimate purpose,
the
burden of proof lies with the Respondent to demonstrate that it has rights
or legitimate interests).
There is no evidence or information
before this Panel that suggests Respondent is known as BODYCARE or by its <bodycare.biz> domain name
pursuant to STOP Policy ¶ 4(c)(iii). Respondent is only known to this Panel as
More Virtual Agency Group or Tumm Aust.
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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and
never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the Panel finds that
Respondent has failed to demonstrate its rights to and legitimate interests in
the <bodycare.biz> domain
name. Thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Due to the nature of NeuLevel’s STOP registration
procedure, Respondent had actual notice of Complainant’s preexisting rights in
the
BODYCARE mark. Respondent’s registration of the disputed domain name,
despite knowledge of Complainant’s rights in the mark, represents
bad faith
registration under STOP Policy ¶ 4(a)(iii). The unique nature of NeuLevel’s
STOP registration procedure precludes an assumption
of good faith registration
when Respondent does not have rights or legitimate interests in the domain
name. See 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”); 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 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).
Additionally, Respondent’s registration
of a domain name that is identical to Complainant’s mark will eventually lead
to user confusion,
resulting in Respondent attracting Internet users searching
for Complainant’s products and services. Respondent does not have rights
or
legitimate interests in the <bodycare.biz>
domain name, which implies Respondent had opportunistic motives in
registering the domain. Respondent’s actions evidence bad faith
under STOP
Policy ¶ 4(b)(iv). See Pillsbury Co. v.
Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding
registration of a domain name identical to Complainant’s mark to be in bad
faith
under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and
Complainant); see also Fluor Corp. v. Song, FA 102757
(Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the
Complainant’s FLUOR mark,
Internet users would likely believe an affiliation exists between Respondent
and Complainant).
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 should be hereby GRANTED.
Accordingly,
it is Ordered that the <bodycare.biz>
domain name be TRANSFERRED from
Respondent to Complainant and that subsequent challenges under the STOP Policy
against this domain name SHALL NOT
be permitted.
Judge Harold Kalina (Ret.), Panelist
Dated: July 18, 2002
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