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Generic Top Level Domain Name (gTLD) Decisions |
COMMONWEALTH BANK OF AUSTRALIA v. LEGAL
SERVICES
Claim Number: FA0205000112637
Complainant
is COMMONWEALTH BANK OF AUSTRALIA,
Sydney, AUSTRALIA (“Complainant”).
Respondent is LEGAL SERVICES,
New Orleans, LA, USA (“Respondent”).
The
domain name at issue is <colonial.biz>,
registered with Intercosmos Media Group.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits 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 May 2, 2002; the Forum
received a hard copy of the Complaint on May
17, 2002.
On
May 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 10,
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 Hon. Carolyn Marks Johnson
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.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
The
<colonial.biz> domain name is identical to Complainant’s COLONIAL
mark. Respondent has no rights or
legitimate interest in the <colonial.biz> domain name.
Respondent
registered the <colonial.biz> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant merged with Colonial Limited
June 2000 and acquired all of Colonial Limited’s proprietary rights, including
the registered
trademark rights in the COLONIAL family of marks. The specific COLONIAL mark at issue is
registered in Australia as Registration Number 716,702.
Complainant extensively uses the COLONIAL
mark in association with its banking and financial products and services. The COLONIAL mark has become an important
source identifier for Complainant.
Respondent registered the <colonial.biz>
domain name on March 27, 2002 and has not established any use, or plans to use,
the domain name in connection with a business purpose.
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 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
Complainant has rights; and
(2) 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 be filed only 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 Complainant asserts
rights.
Complainant
established in this proceeding that it has rights in the COLONIAL mark through
registration with the Australian Trade
Marks Office and by subsequent
continuous use. The domain name
registered by Respondent, <colonial.biz>, is identical to
Complainant’s COLONIAL mark, but for the inconsequential addition of the
top-level domain “.biz.”
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 in view
of 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 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”).
Complainant could not find any evidence
that Respondent owns or is the beneficiary of a trade or service mark identical
to <colonial.biz>.
Complainant’s investigation included a search of the U.S. Patent and
Trademark Office in Respondent’s home country that revealed that
Respondent
does not have a registered trademark or pending application for the COLONIAL
mark. Respondent failed to
affirmatively establish rights in a mark identical to <colonial.biz>. Hence, 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 Respondent 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).
Complainant notes that Respondent is not
using the domain name and no evidence shows that Respondent plans on using the
domain name
for a bona fide business purpose.
Respondent failed to meet its burden of presenting credible evidence
that Respondent plans to use the <colonial.biz> domain name. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to STOP Policy ¶
4(c)(ii). See 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); see also 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).
Respondent has no valid registered rights
in the COLONIAL mark and is not commonly referred to as <colonial.biz>. This Panel knows Respondent as Legal
Services. 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 <colonial.biz> domain
name, thus, STOP Policy ¶ 4(a)(ii) has been satisfied.
Complainant developed the COLONIAL mark
into an important and well-known source identifier for its banking and
financial services. Any foreseeable use
of the <colonial.biz> domain name by Respondent is likely to cause
consumer confusion as to the Complainant’s affiliation. Thus, Respondent’s registration of <colonial.biz>
constitutes bad faith pursuant to 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 between the Respondent and Complainant).
Furthermore, Respondent had notice of
Complainant’s rights in the COLONIAL mark due to the unique nature of the STOP
registration
procedure. This notice
imparts a heightened duty of care on Respondent to make sure its domain name
does not infringe upon another’s mark.
Respondent registered the <colonial.biz> domain name in bad
faith because it had knowledge of Complainant’s rights prior to
registration. 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”); 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 <colonial.biz>
domain name be TRANSFERRED from Respondent to Complainant. Furthermore, subsequent challenges under the
STOP Policy against this domain name SHALL NOT be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 23, 2002.
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