START-UP TRADEMARK OPPOSITION POLICY

DECISION

Golden West Financial v. Golden West Enterprises Inc.

Claim Number: FA0112000103039

PARTIES

The Complainant is Golden West Financial Corporation, Oakland, CA, USA (“Complainant”) represented by Steven Weinberg.  The Respondent is Golden West Enterprises, Inc., Carlton, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <goldenwest.biz>, registered with CORE.

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 December 14, 2001.

On December 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 16, 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 February 6, 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 <goldenwest.biz> domain name is identical to Complainant's GOLDENWEST mark.

           

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

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

B. Respondent

Respondent has failed to submit a Response.

FINDINGS

Complainant has the used the GOLDEN WEST mark since 1980.  Complainant has a California trademark registration for the mark (Reg No. 9916).  Complainant also owns the service mark GOLDEN WEST FINANCIAL CORPORATION registered with the United States Patent and Trademark Office Registration No. 1,537,667.  Both of these marks are in relation to savings and loan association services, as well as investment information and advice.  Complainant also holds the registration for <goldenwest.com>.

Respondent registered the disputed domain name on November 19, 2001.  Respondent's business name incorporates the words GOLDEN WEST, but Complainant asserts that Respondent's rights are inferior to Complainant's because Respondent merely does business as Golden West Enterprises Inc., whereas Complainant owns a service mark for GOLDEN WEST.  Respondent is engaged in the same business activity as Complainant.

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 use in commerce since 1980, and proof of service mark registration has established that it has rights in the GOLDEN WEST mark.  The <goldenwest.biz> domain name is identical to Complainant's GOLDEN WEST 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”).

Respondent, even though it purports to do business as Golden West Enterprises Inc., has not come forward to present any evidence that it has any trademarks or service marks for GOLDEN WEST.  Without such evidence the Panel cannot find that Respondent has demonstrated rights or legitimate interests in respect to the <goldenwest.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supported a finding for Complainant under the UDRP).

Although Respondent has listed its name as Golden West Enterprises Inc., Respondent has failed to come forward with evidence that it plans to use the <goldenwest.biz> domain name in relation to a bona fide offering of goods and services in relation to its business interests under the name GOLDEN WEST pursuant to STOP Policy ¶ 4(c)(ii).  Without this evidence, the Panel cannot find that Respondent will use the <goldenwest.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).

Furthermore, Respondent has failed to come forward to present evidence that it is commonly known by the <goldenwest.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  The Panel, without a showing by Respondent, cannot find that Respondent is commonly known by GOLDEN WEST, despite the fact that registration records indicate that Respondent has claimed its name to be Golden West Enterprises Inc.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting UDRP Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  The UDRP Policy ¶ 4(c)(ii) is exactly the same as STOP Policy ¶ 4(c)(iii).  See 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

It can be inferred that Respondent knew that Complainant existed because they are both engaged in the same business activity and therefore registered the disputed domain name in order to prevent Complainant from reflecting its GOLDEN WEST service mark in a corresponding domain name.  See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name 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”).

Furthermore, at the time of registration, Respondent is presumed to have had actual or constructive knowledge of Complainant and its mark because they are both in the savings and loan industry.  Respondent's knowledge at the time of registration indicates its bad faith pursuant to STOP Policy ¶ 4(b)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

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 <goldenwest.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 8, 2002

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