START-UP TRADEMARK OPPOSITION POLICY

DECISION

International Mill Service Inc. v. Webwide Internet Communication GmbH

Claim Number: FA0206000114464

PARTIES

Complainant is International Mill Service Inc., Horsham, PA, USA (“Complainant”).  Respondent is Webwide Internet Communication GmbH, Durmersheim, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ims.biz>, registered with Key-Systems GMBH.

PANEL

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.

Hon. Ralph Yachnin 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 June 4, 2002; the Forum received a hard copy of the Complaint on June 5, 2002.

On June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 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 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Ralph Yachnin 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

1. Respondent’s <ims.biz> domain name is identical to Complainant’s registered IMS mark.

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

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

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

FINDINGS

Complainant, International Mill Service, Inc., owns service marks (Reg. Nos. 1,237,680 and 1,237,681) with the U.S. Patent and Trademark Office (“USPTO”) for the IMS mark and a stylized IMS logo. Complainant’s IMS marks were listed on the Principal Register of the USPTO on May 10, 1983 and are used to designate Complainant’s consultation, engineering and design services relating to metal recovery for steel producing mills. Since 1969, Complainant has been using the IMS service mark to provide a wide variety of services to the steel industry. 

Respondent registered the <ims.biz> domain name on March 27, 2002 through NeuLevel’s STOP Registration procedure. Respondent has yet to produce a stated purpose for the domain name, or develop a website in connection with the <ims.biz> domain name. Complainant’s investigation revealed that Respondent, WebWide InterNet Communication Gmbh, is a German corporation involved in professional domain name hosting and reselling.

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 has established rights in the IMS mark through registration with the USPTO and continuous use of the mark since 1969.

Respondent’s <ims.biz> domain name is identical to Complainant’s IMS mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, mirroring it in spelling and form. The addition of the gTLD “.biz” fails to distinguish Respondent’s mark as unique and separate from the second level domain that reflects Complainant’s IMS mark. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <ims.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. 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 yet to develop a stated purpose in connection with the disputed domain name, and has not provided any information suggesting any demonstrable preparations to use <ims.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 rebutting Complainant’s allegations that it registered <ims.biz> for a legitimate purpose. Furthermore, Complainant provides uncontested evidence that Respondent specializes in domain name hosting and selling. Respondent’s primary motive in acquiring the subject domain name was to monetarily benefit from its sale; thus, Respondent lacks rights and legitimate interests in <ims.biz>. 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Based on WHOIS data and Complainant’s unrefuted information that Respondent operates under the moniker “Webwide Internet Communication” and is involved in the business of selling domain names, Respondent has no apparent connection to the <ims.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Complainant also failed to locate any information that would suggest Respondent is the owner or beneficiary of a trademark or service mark that is identical to the disputed 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 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

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

Registration or Use in Bad Faith

As stated, Complainant has provided this Panel with uncontested evidence that Respondent is involved primarily in the business of hosting and selling domain names, presumably to the highest bidder. By its nature and definition of incorporation, it can be inferred that Respondent is offering the subject <ims.biz> domain name for sale; thus, Respondent’s behavior represents bad faith registration under STOP Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

The criterion specified in ¶ 4(b) 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, Respondent had actual notice of Complainant’s preexisting rights in the IMS mark. Respondent’s subsequent registration of the infringing <ims.biz> domain name without rights or legitimate interests, and despite knowledge of Complainant’s preexisting 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) (evidence of bad faith includes actual or constructive knowledge of 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”).

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 <ims.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. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

Dated: July 24, 2002

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