COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Tropar Manufacturing Co., Inc. v. TSB a/k/a Takoma Sign & Banner and Lee George

Claim Number: FA0210000126845

PARTIES

The Complainant is Tropar Manufacturing Co., Inc., Florham Park, NJ (“Complainant”) represented by Marc P. Misthal, of Gottlieb Rackman & Reisman, PC.  The Respondent is TSB a/k/a Takoma Sign & Banner and Lee George, Takoma Park, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info>, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on October 4, 2002: the Forum received a hard copy of the Complaint on October 1, 2002.

On October 8, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain names <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> are registered with eNom, Inc. and that the Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP”) as it applies to <tropar.biz> and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as it applies to all of the disputed domain names.

On October 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “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 November 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as 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 Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES CONTENTIONS

            A. Complainant

Respondent is not making a bona fide business or commercial use of <tropar.biz>.

The  <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> domain names are identical to Complainant's TROPAR mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

            B. Respondent

No Response was received.        

FINDINGS

Complainant holds Registration Number 1,122,808 for its TROPAR trademark with the United States Patent and Trademark Office issued on July 24, 1979 covering trophies and trophy components, wooden plaques and gift awards.  Complainant also owns a Canadian Trademark Registration for TROPAR listed as Canadian Registration Number TMA 525,849, as well as a Mexican Trademark listed as Registration Number 631,796. 

Respondent registered all the disputed domain names on June 28, 2002.    Respondent has used the disputed domain names in order to host a website that features commentary and other negative comments about Complainant.  Before registering the disputed domain names Respondent did business with Complainant.  Respondent does not have permission or a license from Complainant to use the TROPAR mark.  Respondent offered to sell the disputed domain name registrations to Complainant within three months of their registration in exchange for reimbursement of undocumented costs.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant 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.”

Paragraph 4(a) of the UDRP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the RDRP defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

Respondent’s registration of <tropar.biz> is subject to the requirements of the RDRP.  The RDRP requires that the domain name be used in connection with a bona fide business or commercial use.  The RDRP paragraph 4(c) provides specific situations that will not be considered to be a bona fide business or commercial use for illustrative purposes and are not exclusive. 

Respondent is using the <tropar.biz> domain name in order to divert Internet users to a website that features criticism about Complainant.  Respondent has not used the <tropar.biz> domain name in relation to any other purpose.  No goods or services have been offered at the website, nor is Respondent using the domain name to divert Internet users to a website that features goods or services.  Therefore, Respondent is using the <tropar.biz> domain name exclusively for the expression of noncommercial ideas.  This type of use is not a bona fide business or commercial use pursuant to RDRP paragraph 4(c).  See RDRP ¶ 4(c)(iii)(b) (stating that using or intent to use a domain name exclusively for the expression of noncommercial ideas, e.g., registering the domain name in order to criticize or otherwise express an opinion on the products or services of a company with no other intended business purpose, does not constitute a bona fide business or commercial use).

Therefore, the Panel finds that Respondent has failed to use the <tropar.biz> domain name in relation to a bona fide business or commercial use and RDRP Policy paragraph 4(b) has been satisfied.  Because the other domain names in dispute <tropar.com>, <tropar.net>, <tropar.org>, and <tropar.info> are not “.biz” domain names, and therefore not subject to the RDRP, it is necessary to proceed and apply the UDRP to the domain names in order to determine if Respondent has any rights in the disputed domain names.  The Panel will also apply the UDRP analysis to <tropar.biz> as the claim was filed under both Policies.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the TROPAR mark through registration with the United States Patent and Trademark Office and continuous use since 1959.

Respondent’s <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> domain names are all identical to Complainant’s TROPAR mark because they incorporate Complainant’s entire mark and merely add a generic top-level domain.  The addition of a generic top-level domain does not create a distinguishing characteristic because top-level domains are a required component of every domain name.  Therefore, the addition of “.com,” “.info,” and other generic top-level domains does not create a domain name capable of overcoming a claim of identical or confusing similarity pursuant to UDRP ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

The Panel finds that the disputed domain names are identical to Complainant’s mark and UDRP ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also 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”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain names.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is not using the disputed domain names in connection with the sale of any goods or services because it is using <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> in order to divert Internet users to a website that criticizes Complainant and attempts to tarnish Complainant’s mark.  Therefore, Respondent is not using the domain names in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i).  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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

There is no evidence on record, and Respondent has not come forward with any proof that it is commonly known as TROPAR or any of the disputed domain names.  Therefore, Respondent has failed to establish that it is has any rights or legitimate interests in the dispute domain names pursuant to UDRP ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent is using the disputed domain names in order to divert Internet users interested in Complainant to its own website criticizing Complainant.  Respondent’s website features disparaging comments about Complainant and tarnishes Complainant’s TROPAR mark.  Although criticism websites are considered to be a fair use of a domain name, the use of another entity’s mark to identify that domain name is not considered to be a fair use giving rise to rights and legitimate interests.  See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (finding that “[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”).  When using Complainant’s mark in relation to a complaint site, the burden of proof rests on Respondent to show that no alternatives to using Complainant’s mark exist to accomplish its purpose. See Meijer, Inc. v. Porksandwich Web Services FA 97186 (Nat. Arb. Forum July 6, 2001) (finding that it is reasonable to shift the burden of proof to Respondent to show why no reasonable alternatives exist to use of that particular domain name that includes the mark or name of Complainant for a criticism site aimed at Complainant).  In this case, Respondent has registered multiple domain names that are identical to Complainant’s TROPAR mark, and has failed to respond to the Complaint.  Therefore, Respondent has not carried its burden of proof and the Panel may infer that Respondent does not have any rights or legitimate interests in the disputed domain names pursuant to UDRP ¶ 4(c)(iii).  See Baker & Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because Respondent’s <bakeranddaniels.com> domain name merely incorporates Complainant’s trademark, without more, it is not protected by the First Amendment); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).

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

Registration and Use in Bad Faith

UDRP paragraph 4(b) lists four circumstances that can give rise to evidence of bad faith.  The factors listed in this paragraph are not meant to be exclusive.  Numerous other situations can give rise to evidence of bad faith.  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Respondent was a customer of Complainant’s before it registered the disputed domain names.  Therefore Respondent had actual notice of Complainant’s rights in the TROPAR mark.  Registration of a domain name that infringes on another’s trademark rights, despite actual knowledge of these rights, is evidence of bad faith registration pursuant to UDRP ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent’s registration of numerous domain names in a single instance that are identical to Complainant’s TROPAR mark is evidence of a bad faith pattern of conduct.  This behavior is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(ii).  See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

Therefore, the Panel finds that UDRP ¶ 4(a)(iii) has been satisfied.

DECISION

Having satisfied RDRP paragraph 4(b) in relation to <tropar.biz>, and establishing all three elements required under the UDRP for each of the disputed domain names, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain names <tropar.com>, <tropar.net>, <tropar.org>, <tropar.biz> and <tropar.info> be transferred from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: December 4, 2002

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