START-UP TRADEMARK OPPOSITION POLICY

DECISION

San Francisco Bay Area Rapid Transit District v. Bart Dorsa

Claim Number: FA0112000102789

PARTIES

The Complainant is San Francisco Bay Area Rapid Transit District, Oakland, CA, USA (“Complainant”) represented by Bonnie J. Barnish, of Owen Wickersham & Erickson.  The Respondent is Bart Dorsa, Campbell, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bart.biz>, registered with Network Solutions, Inc.

PANEL

On January 29, 2002, pursuant to STOP Rule 6(b), the Forum appointed James P. Buchele as the single Panelist.  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.

 

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 8, 2001; the Forum received a hard copy of the Complaint on December 10, 2001.

On December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 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.

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

Complainant has rights to its BART trademark.

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

Respondent registered <bart.biz> in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a transportation district serving the San Francisco Bay Area.  Complainant registered the BART trademark (Reg. No. 972,406 and 975,032 in Int’l classes 16 and 39) on the Principal Register of the United States Patent and Trademark Office on December 18, 1973 in connection with its transportation services.  In addition to its federal registration, Complainant has used the BART marks as early as 1965 in connection with advertising, promoting and marketing its transportation service and related goods. 

Over 1.7 billion passengers have ridden the BART since 1972, and as a result, it has established substantial good will amongst the public.  Its notoriety amongst the population is also demonstrated by Universal Studio’s decision to model a ride simulating an earthquake on the BART train in its Orlando and Los Angeles theme parks.

Respondent registered <bart.biz> on November 19, 2001.

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 demonstrated rights through its use of the BART name in commerce, as well as its USPTO registration of the BART trademark.

The <bart.biz> domain is identical to Complainant’s BART mark.

The Panel finds that STOP ¶ 4(a)(i) has been satisfied

Rights or Legitimate Interests

The Panel is allowed to determine Respondent does not have rights or legitimate interests in the disputed domain name because Respondent has failed to provide a Response to this claim.  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).

Complainant’s search of federal and state trademark databases revealed no record of a BART trademark associated with Respondent, and Respondent has not provided any information indicating that it owns a trade or service mark that is in any way related to the Complainant’s registered BART mark. This indicates that Respondent has no rights or legitimate interests in the disputed domain pursuant to STOP Policy ¶ 4(c)(i).

Respondent’s failure to provide evidence of demonstrable preparations for a bona fide offering of goods or a business plan for the disputed domain indicates that it does not have rights or legitimate interests with respect to the disputed domain pursuant to Policy ¶ 4(c)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute.

Although Respondent’s first name is Bart, Respondent has not brought forth any information to show that it conducts business under the BART name, nor has it sought permission from Complainant to use its trademarked BART name.  This indicates that Respondent has no rights or legitimate interests in the disputed domain pursuant to Policy ¶ 4(c)(iii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name); 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).  Furthermore, Complainant’s BART transportation services are well known not only in San Francisco, but also throughout the world.  This indicates that Respondent’s unrelated business is presumed not to be commonly known by the BART name or the identical disputed 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 Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

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

Registration or Use in Bad Faith

It can be inferred by the fame and popularity of BART transportation services, that Respondent registered a domain identical to Complainant’s mark in order to commercially benefit from the many Internet users who will inevitably mistake Respondent’s website for a website affiliated with Complainant’s transportation service.  This behavior suggests 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 good will and attract Internet users to the Respondent’s website); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Respondent must have been aware of Complainant’s exclusive rights in the BART mark as a result of the notification requirement included in the .BIZ registration process.  Therefore, Respondent is presumed to have actual or constructive knowledge of Complainant’s exclusive rights in the BART mark at the time of registration; this is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(i).  See The Prudential Ins. Co. v. Bixga Co., Ltd., FA 95487 (Nat. Arb. Forum Oct. 6, 2000) (finding bad faith registration and use where Respondent knew or should have known of Complainant’s marks prior to registration of the domain name “theprudential.com”).

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 <bart.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.

James P. Buchele, Panelist

Dated: February 1, 2002

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