START-UP TRADEMARK OPPOSITION POLICY

DECISION

Construction Specialties v. Ed Levush dba Contract Solutions

Claim Number: FA0112000103035

PARTIES

The Complainant is Construction Specialties, Inc., Muncy, PA (“Complainant”).  The Respondent is Ed  Levush Contract Solutions, Baltimore, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <csgroup.biz>, registered with Tucows, Inc.

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 December 14, 2001; the Forum received a hard copy of the Complaint on .

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.

On January 30, 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

The <csgroup.biz> domain name is identical to Complainant's C/S GROUP mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has United States common law rights in the mark C/S GROUP because it has used the mark continuously in commerce in relation to its products.  The products that bear the C/S GROUP mark are louvers and grilles, sight and sun screens, wall panels, entrance foot mats and grilles, pressure relief panels, handrails, crash rails, bumper guards, and corner guards.  All of these products are labeled with the C/S GROUP mark when they are shipped in the United States

Respondent registered the disputed domain name on November 19, 2001.  Respondent's name is Ed Levush.  Respondent's address is the location of a business called Corridor Flooring.  This business is a competitor of Complainant's.  Respondent's website <contract-solutions.net> is under construction.  Complainant's investigation has found no evidence, other than the inactive website, that Respondent is commonly known by CSGROUP or <csgroup.biz>.  Furthermore, Complainant's investigation has found no evidence of trademark or service mark registrations for CSGROUP owned by Respondent.

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 extensive use in the United States has established that it has common law rights in the C/S GROUP mark.  The <csgroup.biz> domain name is identical to Complainant's C/S GROUP mark because the "/" cannot be reflected in a domain name.  See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at “www.pge.com” because the ampersand symbol is not reproducible in a domain name); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

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 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 to offer evidence that it has used the C/S GROUP mark in connection with its business, or that it owns any trademarks or service marks anywhere in the world incorporating the words.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <csgroup.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

Respondent could not use the disputed domain name without creating an impression that it was associated with Complainant because the <csgroup.biz> domain name is identical to Complainant's C/S GROUP mark.  The intended use of a domain name, identical to Complainant's mark, to mislead or confuse Internet users is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Complainant has found no evidence that Respondent is known by anything other than Ed Levush, and Respondent has not come forward to establish that it is commonly known by the <csgroup.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); 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

Because Respondent's address is the location of a business that competes with Complainant it can be inferred that Respondent registered the disputed domain name in order to disrupt Complainant's business.  The registration of a domain name in order to disrupt the business of a competitor is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of the Complainant, a competitor of the Respondent).

Based on the circumstances, it can be inferred that Respondent registered <csgroup.biz> in order to prevent Complainant from using its C/S GROUP mark in a corresponding domain name.  This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: February 4, 2002

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