START-UP TRADEMARK OPPOSITION POLICY

DECISION

Enabler Informatica S.A. v. Stewart Fenn Marketing Limited

Claim Number: FA0204000110774

PARTIES

Complainant is Enabler Informatica S.A., Porto, PORTUGAL (“Complainant”).  Respondent is Stewart Fenn Marketing Limited, Guildford, UNITED KINGDOM (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <enabler.biz>, registered with Netbenefit d/b/a Netnames.

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.

Tyrus R. Atkinson, Jr., 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 April 23, 2002; the Forum received a hard copy of the Complaint on April 28, 2002.

On June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 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 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., 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 <enabler.biz> domain name is identical to Complainant’s registered ENABLER mark.

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

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

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

FINDINGS

Complainant holds Portuguese Reg. No. 323,368 for the ENABLER mark registered on November 4, 1997. Complainant’s registered ENABLER mark is the primary component of its trade name, “Enabler Informatica S.A.”

Respondent registered the disputed domain name on March 27, 2002. Complainant’s investigation revealed that Respondent is a marketing company and upon information and belief, asserts Respondent is reserving the use of <enabler.biz> for a future commercial opportunity.

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. 

Complainant’s Rights in the Mark

Complainant has established rights in the ENABLER mark through registration with the Portuguese Instituto Nacional da Propriedeade Industrial, and subsequent continuous use.

Respondent’s <enabler.biz> domain name is identical to Complainant’s registered ENABLER mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, mirroring it in spelling and form. Respondent’s domain name deviates only by the negligible addition of the gTLD “.biz.” However, gTLD’s are not considered to transform a domain name into a separate and distinct mark and are not a factor in determining whether a disputed domain name is identical to the mark at issue. 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). 

Accordingly, the Panel finds that 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 <enabler.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 purpose for the disputed domain name and has not provided any evidence showing demonstrable preparations to use <enabler.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 it registered <enabler.biz> for a legitimate purpose. Respondent’s failure to support its registration with evidence signifying some right or legitimate interest in the disputed domain name implies Respondent has none. 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).

There is no apparent connection between Respondent’s marketing business and trade name of “Stewart Fenn” and the <enabler.biz> domain name. Respondent has failed to provide the Panel with any evidence suggesting its connection to the ENABLER mark is legitimate. There is no information indicating that Respondent is the owner of a trademark or service mark identical to <enabler.biz> pursuant to STOP Policy ¶ 4(c)(i), nor has Respondent refuted Complainant’s accusations that Respondent is not commonly known by the subject domain name under STOP Policy ¶ 4(c)(iii). 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 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 STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

The criteria 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 UDRP is not an exhaustive list of bad faith evidence).

Due to the nature of the STOP IP Claim registration procedure, Respondent was given notice of Complainant’s rights in the ENABLER mark. Complainant asserts exclusive dominion over the ENABLER mark, which Respondent has failed to refute. Respondent’s registration of an infringing domain name, despite knowledge of Complainant’s preexisting rights in the ENABLER mark, represents bad faith registration under STOP Policy ¶ 4(a)(iii). See 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 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”).

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 <enabler.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.

Tyrus R. Atkinson, Jr., Panelist

Dated: August 1, 2002.

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