START-UP TRADEMARK OPPOSITION POLICY

DECISION

UMB Financial Corporation v. More Virtual Agency

Claim Number: FA0205000114421

PARTIES

Complainant is UMB Financial Corporation, Kansas City, MO, USA (“Complainant”) represented by Clinton G Newton.  Respondent is More Virtual Agency, Bonn, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <scout.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.

Judge Harold Kalina (Ret.) 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 28, 2002; the Forum received a hard copy of the Complaint on May 28, 2002.

On June 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 24, 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 17, 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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <scout.biz> domain name is identical to Complainant's SCOUT mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1994, Complainant and its affiliated companies have used the SCOUT mark in relation to mutual fund distribution and investment services.  Complainant and its affiliates are registered in 49 states offering a full range of brokerage products, including stocks, bonds, mutual funds and variable annuities, and uses the Internet to promote its securities services.  Complainant has approximately 30,000 customers and uses the SCOUT mark in its advertising campaigns.

Complainant is the owner of three trademark registrations with the United States Patent and Trademark Office, consisting of Registration Numbers 1,918,993; 1,978,729; and 2,053,151. 

Respondent registered the <scout.biz> domain name on March 27, 2002.  Complainant has been unable to locate any evidence that Respondent owns any trademarks or service marks for SCOUT anywhere in the world.  Complainant has found evidence that Respondent has registered numerous domain names and has been the Respondent in numerous domain name disputes.  Respondent operates a website at <virtual-agency.com>.  Complainant’s investigation found that Respondent made no use of the SCOUT mark at its website.

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 that it has rights in the SCOUT mark through its continuous use and registration with the United States Patent and Trademark Office. 

Respondent’s <scout.biz> domain name is identical to Complainant’s SCOUT mark because it uses Complainant’s entire mark and merely adds the generic top-level domain name “.biz,” which is inconsequential when determining whether a domain is identical. 

            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 not demonstrated 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”).

Respondent has not come forward with any evidence, nor is there any evidence on record that shows that Respondent owns a trademark or service mark for SCOUT.  Furthermore, there is no evidence that Respondent uses the term in relation to its business.  Complainant’s investigation of Respondent’s website found no usage of the SCOUT moniker.  Therefore, Respondent has failed to demonstrate its rights and legitimate interests in 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).

Respondent has registered numerous domain names infringing upon the trademarks of others, and has been the Respondent in more than one domain name dispute.  Based on this information, and Respondent’s failure to Respond in this proceeding, it can be inferred that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to 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).

Respondent is only known to the Panel as “More Virtual Agency” and there is no evidence to establish that Respondent is commonly known by any other name.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in <scout.biz> pursuant to STOP Policy ¶ 4(c)(iii) because it has failed to show that it is commonly known by SCOUT or <scout.biz>.  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); 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).

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

Registration or Use in Bad Faith

Respondent has engaged in a pattern of registering domain names that infringe upon the trademarks of others, in order to benefit from the goodwill of others.  It can be inferred, from this pattern of behavior, that Respondent registered <scout.biz> intending to commercially benefit from Complainant’s goodwill.  Therefore, Respondent’s registration represents bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Furthermore, Respondent’s numerous domain name registrations that infringe upon the marks of others make it possible to infer that Respondent registered the disputed domain name in order to sell it in excess of its out-of-pocket expenses to Complainant or some other entity.  Registration of a domain name in order to sell, rent, or transfer that registration to another is considered to be bad faith pursuant to STOP Policy ¶ 4(b)(i).  See Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent); see also 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).

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

                                                                                                            Judge Harold Kalina (Ret.), Panelist

                                                                                                                        Dated:  July 31, 2002

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