START-UP TRADEMARK OPPOSITION POLICY

DECISION

Gehl Company v. Roy Gehl

Claim Number: FA0112000102816

PARTIES

The Complainant is Michael J. Mulcahy Gehl Company, West Bend, WI (“Complainant”) represented by Michael J. Mulcahy, of Gehl Company.  The Respondent is Roy Gehl, London, U.K. (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gehl.biz>, registered with Melbourne IT.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin 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 December 11, 2001; the Forum received a hard copy of the Complaint on December 13, 2001.

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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 January 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin 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

The <gehl.biz> domain name is identical to Complainant's GEHL mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1859, Complainant has used the GEHL mark in commerce in relation to its construction and agriculture equipment, machines and vehicles.  Complainant is the owner of U.S. Trademark Numbers. 1,744,276; 1,010,105; and has applied for a European Community Trademark.  Complainant is also the owner of a U.K. Trademark.

Complainant currently uses <gehl.com> for its website.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is an individual with the name Roy Gehl.  Research by Complainant has not revealed that Respondent owns a trademark incorporating its last name.  There is no evidence that Respondent has any business interests associated with the name GEHL.

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 through continuous use since 1859, and evidence of its trademark registrations in the United States and the United Kingdom, has established that it has rights in the GEHL mark.  The GEHL mark is identical to the <gehl.biz> domain name.

Therefore 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 and 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 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 has established that it has rights in the disputed domain name because it has used the mark in commerce since 1859, and is the owner of two trademarks on the Principle Register of the United States Patent and Trademark Office as well as a trademark in the U.K.  Respondent has not come forward to offer evidence that it has used its name "Gehl" in commerce.  Nor has the Respondent come forward to offer evidence that it owns any trademarks or service marks incorporating the name "Gehl" anywhere in the world.  Without any evidence that Respondent, as an individual, is known in commerce as GEHL the Panel cannot establish that Respondent has rights or legitimate interests in the <gehl.biz> domain name under the STOP Policy ¶ 4(c)(i). 

Although Respondent's name is "Gehl", Respondent has failed to come forward with evidence that it plans to use the <gehl.biz> domain name in relation to a bona fide offering of goods and services in relation to its business interests under the name GEHL pursuant to STOP Policy ¶ 4(c)(ii).  Without this evidence, the Panel cannot find that Respondent will use the <gehl.biz> domain name for a bona fide offering of goods or services.  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).

Furthermore, Respondent has failed to come forward to present evidence that it has any business interests under the name GEHL, or is commonly known by the <gehl.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  The Panel, without a showing by Respondent, cannot find that Respondent is commonly known by GEHL, despite the fact that registration records indicate that Respondent has claimed its last name to be "Gehl."  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  The UDRP Policy ¶ 4(c)(ii) is exactly the same as STOP Policy ¶ 4(c)(iii).  See 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).   

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Because of the long standing use and historic nature of  Complainant's GEHL mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <gehl.biz> domain name.  Moreover, Respondent is not known by the <gehl.biz> domain name and therefore should have known that the registration of such a domain name would infringe upon Complainant's mark.  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 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 constitutes bad faith).

The Panel finds that 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 <gehl.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Sandra Franklin, Panelist

Dated: January 30, 2002

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