START-UP TRADEMARK OPPOSITION POLICY

DECISION

Switchboard Inc. v. Search Hound

Claim Number: FA0112000102783

PARTIES

The Complainant is Bob Perry Switchboard Inc., Westborough, MA (“Complainant”) represented by Nels T.  Lippert, of Hale And Dorr LLP.  The Respondent is Tim Prier Search Hound, Kansas City, MO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <switchboard.biz>, registered with eNom 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 8, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.

On December 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 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 <switchboard.biz> domain name is identical to Complainant's SWITCHBOARD mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1996, Complainant has used the SWITCHBOARD mark in commerce in relation to its Internet-based local merchant network.  Complainant registered the mark with the United States Patent and Trademark office.  The SWITCHBOARD mark is Registration No. 2,445,844.  Complainant provides directory technology and advertising services over the Internet.  Its website, <switchboard.com> offers services such as yellow and white pages, product searching, interactive maps, and driving directions throughout the country.  Each day millions of consumers utilize Complainant's products and services through its website.  Complainant's products and services are marketed around the world under the SWITCHBOARD mark.  Through its advertising and wide use consumers have come to associate the SWITCHBOARD mark with Complainant and have accumulated substantial goodwill.

Respondent registered <switchboard.biz> on November 19, 2001.  Complainant's investigation has not found any trademarks or servicemarks owned by Respondent for the SWITCHBOARD mark.  Complainant has found no evidence that Respondent it commonly known by anything other than Search Hound Inc.

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 continuous use of the SWITCHBOARD mark in commerce since 1996 and registration of the mark in the United States has established that it has rights in the SWITCHBOARD mark.  The <switchboard.biz> domain name is identical to Complainant's SWITCHBOARD mark.

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”).

Complainant has established that it has rights in the SWITCHBOARD mark through use in commerce and registration with the United States Patent and Trademark Office.  Complainant has not found any evidence that Respondent owns any trademark or service mark registrations for the SWITCHBOARD mark, nor has Respondent come forward with any evidence to show that it has registered the mark anywhere in the world.  Therefore, Respondent has not demonstrated that it has rights or legitimate interests in the <switchboard.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

It can be inferred that Respondent's planned use of <switchboard.biz> is to divert Internet users interested in Complainant to Respondent's website.  The intended use of a domain name identical to Complainant's mark to divert Internet users to Respondent's website is not considered a bona fide offering of goods or services pursuant of  STOP Policy ¶ 4(c)(ii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also 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).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <switchboard.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 CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

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

Registration or Use in Bad Faith

Based on the fact that Respondent is known as Search Hound Inc. it can be inferred that Respondent offers Internet search services that compete with Complainant and registered <switchboard.biz> in order to disrupt Complainant's business.  This behavior 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).

Furthermore, any future use of the <switchboard.biz> domain name by Respondent will cause a likelihood of confusion as to the source and sponsorship of the domain name because it is identical to Complainant's mark.  The registration of a domain name despite the fact that it is identical to another's mark is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

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 <switchboard.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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