START-UP TRADEMARK OPPOSITION POLICY

DECISION

American Dairy Queen Corp. v. Aly Ramzan

Claim Number: FA0205000114416

PARTIES

Complainant is American Dairy Queen Corp., Minneapolis, MN, USA (“Complainant”).  Respondent is Aly Ramzan, Karachi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <dairyqueen.biz>, registered with Tucows, Inc.

PANEL

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.

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 May 24, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.

On May 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 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.

RELIEF SOUGHT

Complainant seeks transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Respondent’s <dairyqueen.biz> domain name is identical to Complainant’s registered DAIRY QUEEN mark.

2. Respondent does not have any rights or legitimate interests in respect of the <dairyqueen.biz> domain name.

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

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant established in this proceeding that it owns U.S. Patent and Trademark Office (“USPTO”) Reg. No. 728,531 for the DAIRY QUEEN mark as listed on the Principal Register on March 13, 1962. Complainant’s “first use” of the DAIRY QUEEN mark is recorded as June 1940. Complainant is the owner of numerous other registered trademarks incorporating the DAIRY QUEEN mark in over 100 countries worldwide. Currently, over 5,900 Dairy Queen stores exist and operate throughout the world.

Respondent registered the disputed domain name on March 27, 2002.

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 as 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 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 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 DAIRY QUEEN mark through registration with the USPTO and other authorized international organizations, and continuous use of the mark since 1940.

Respondent’s <dairyqueen.biz> domain name is identical to Complainant’s DAIRY QUEEN mark because Respondent’s second level domain incorporates Complainant’s mark in its entirety. Respondent’s disputed domain name deviates only with the inconsequential addition of the gTLD “.biz” and the deletion of the space between the words that comprise Complainant’s DAIRY QUEEN mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Respondent’s Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, the Panel is permitted to presume that Respondent lacks rights and legitimate interests in the <dairyqueen.biz> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant’s claim. 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”).

Respondent has not developed a stated purpose for the disputed domain name and has not provided any evidence showing any demonstrable preparations to use <dairyqueen.biz> in connection with a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). Respondent has the burden of producing credible evidence that Respondent registered <dairyqueen.biz> for a legitimate purpose. Respondent’s failure to support the registration with evidence signifying some right or legitimate interest in the disputed domain name implies that Respondent has none. Furthermore, any planned use of Complainant’s famous mark would represent an opportunistic attempt to trade on the goodwill associated with Complainant’s internationally recognized mark. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that any planned use of <grammy.biz>  by Respondent would be an opportunistic attempt to attract Internet users via Complainant’s famous GRAMMY mark, therefore, Respondent had no rights or legitimate interests); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no 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).

No evidence in the record suggests that Respondent is commonly known by the <dairyqueen.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii), and nothing shows that Respondent holds any trademark or service mark that is identical to its infringing domain name under STOP Policy ¶ 4(c)(i). Respondent’s registration of Complainant’s famous DAIRY QUEEN mark creates a presumption that Respondent does not hold any rights or legitimate interests in the <dairyqueen.biz> domain name. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also 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 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).

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

The criteria specified in ¶ 4(a)(iii) of the STOP Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Due to the nature of NeuLevel’s STOP IP claim registration procedure and the famous identity of Complainant’s DAIRY QUEEN mark, Respondent had constructive notice of Complainant’s preexisting rights in the DAIRY QUEEN mark. Respondent’s subsequent registration of the infringing <dairyqueen.biz> mark, with knowledge of Complainant’s rights, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); 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”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Any planned use by Respondent of Complainant’s famous DAIRY QUEEN mark would represent a bad faith attempt to opportunistically trade on the goodwill and fame associated with Complainant’s DAIRY QUEEN family of marks. Therefore, Respondent’s registration represents bad faith under STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

 

Lastly, Respondent registered the infringing domain name without any rights or legitimate interests. Respondent’s lack of legitimate interests in the <dairyqueen.biz> domain name and knowledge of Complainant’s rights implies that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent’s actions represent bad faith registration under 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 STOP Policy, the Panel concludes that relief should be hereby GRANTED.

Accordingly, it is Ordered that the <dairyqueen.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.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 23, 2002.

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