START-UP TRADEMARK OPPOSITION POLICY

DECISION

Webco Industries Inc. v. Web Site Development Co.

Claim Number: FA0112000102958

PARTIES

The Complainant is Webco Industries Inc., Washington, DC (“Complainant”) represented by Marsha G. Gentner, of Jacobson Holman Pllc.  The Respondent is Anthony Farrell and Web Site Development Co., Milwaukee, WI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <webco.biz>, registered with Register.com.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin 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 December 14, 2001.

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin 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 <webco.biz> domain name is identical to Complainant's WEBCO mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1989, Complainant has used the WEBCO mark in commerce in relation to pipes, tubing and manufacturing.  Complainant has owned a United States Trademark Registration since 1995.  The trademark is Registration Number 1,938,055.  Complainant also owns trademarks in the European Community, Israel, and Canada.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is known as Website Development Company or <websitedevelomentco.com>.  Respondent has not presented any evidence that it has any trademarks, service marks, or common law rights in the WEBCO mark, nor has Respondent offered any evidence to show that it is known as WEBCO or <webco.biz>.  Respondent has also recently registered the <webco.info> domain name.  Respondent offers to obtain or transfer domain names to others for a fee on its <websitedevelomentco.com> website.

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 established that it has rights in the WEBCO mark through continuous use in the United States and the international sphere, as well as through trademark registration in Europe, the United States and Israel.  The WEBCO mark is identical to the <webco.biz> domain name.

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”).

Complainant has established that it has rights in the disputed domain name because it has used the mark in Commerce since 1989, and is the owner of  a trademark in the United States, European Community, Israel and Canada.  Respondent has not come forward to offer evidence that it has any business interests under the name WEBCO or that it owns any trademarks or service marks incorporating the word anywhere in the world.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <webco.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

Respondent has failed to come forward with evidence that it plans to use the <webco.biz> domain name in relation to a bona fide offering of goods and services in relation to its business interests under the name WEBCO pursuant to STOP Policy ¶ 4(c)(ii).  Without this evidence, the Panel cannot find that Respondent will use the <webco.biz> domain name for a bona fide offering of goods or services.  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).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <webco.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  Furthermore, Complainant has presented evidence that Respondent is commonly known as <websitedevelomentoco.com>.  See 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).

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

Registration or Use in Bad Faith

Because Respondent operates a website that offers to register and transfer domain names for a fee, it can be inferred that Respondent registered the <webco.biz> domain name primarily for the purpose of selling, renting, or transferring the domain name for valuable consideration.  Conduct such as this is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(i).  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 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 <webco.biz> domain name is identical to Complainant's WEBCO mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <webco.biz> domain name despite it being identical 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’”).

It can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its WEBCO 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 <webco.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Sandra Franklin, Panelist

Dated: February 6, 2002

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