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Generic Top Level Domain Name (gTLD) Decisions |
Trade Media
Holdings Limited v. Jimmy So
Claim Number: FA0112000102965
Complainant is Tang Yang Ping and Trade Media Holdings Limited, SINGAPORE (“Complainant”). Respondent is Jimmy So, Xiamen, CHINA (“Respondent”).
The domain name at issue is <asiansources.biz>, registered with OnlineNIC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
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 17, 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. Carolyn Marks Johnson 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.
Transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following allegations:
The <asiansources.biz> domain name is identical to Complainant's ASIAN SOURCES mark. Respondent has no rights or legitimate interests in the <asiansources.biz> domain name. Respondent registered the <asiansources.biz> domain name in bad faith.
B. Respondent did not file a Response in this proceeding.
Since 1970, Complainant has used the ASIAN SOURCES mark in commerce in relation to advertising, business analysis, management, inquiries, consulting and assistance, as well as a variety of other business, advertising and computer related activities. Complainant has registered the mark in Hong Kong, China, the United States, Singapore, South Korea, Thailand and Taiwan. Complainant operates as a web-based business located at <asiansources.com>.
Respondent registered the disputed domain name November 19, 2001. Complainant's investigation has not found any trademarks or service marks owned by Respondent for the ASIAN SOURCES mark anywhere in the world. Respondent admitted to Complainant that it does not intend to use the <asiansources.biz> domain name. Respondent registered the domain name with a domain name registrar that is used exclusively by domain name brokers.
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 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 Complainant has rights; and
(2) 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, through numerous registrations throughout the world and by continuous use since 1971, has established that it has rights in the ASIAN SOURCES mark. The <asiansources.biz> domain name is identical to Complainant's ASIAN SOURCES mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response and therefore it is
presumed that Respondent has not demonstrated rights to
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 ASIAN SOURCES mark through use and registration. Respondent has not come forward with any evidence that it owns any trademark or service mark registrations anywhere in the world. Therefore, Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i).
In order to establish rights and legitimate interests pursuant to STOP Policy ¶ 4(c)(ii), there must be evidence that Respondent intends to use <asiansources.biz> for a bona fide offering of goods or services. Respondent has admitted that it does not intend to use the disputed domain name, therefore it has not demonstrated any rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii). 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); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Furthermore, Respondent has not come forward with any evidence that it is commonly known by the <asiansources.biz> domain name nor is there any evidence on the record. Therefore, the Panel cannot find that Respondent has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See 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); 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.
The <asiansources.biz> domain name is identical to Complainant's ASIAN SOURCES mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <asiansources.biz> domain name despite its being identical to Complainant’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 may infer that Respondent registered the disputed domain name in order to sell it because Respondent admits that it never intended to use <asiansources.biz> and because Respondent registered the domain name with a registrar used exclusively for domain name sales and brokering. The registration of a domain name primarily for the purpose of selling, renting, or otherwise transferring is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
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 <asiansources.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 12, 2002.
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URL: http://www.worldlii.org/int/other/GENDND/2002/208.html