START-UP TRADEMARK OPPOSITION POLICY

DECISION

S.D.S. Industries Inc. d/b/a Timely A California Corporation v. Young Joon Choi

Claim Number: FA0112000103060

PARTIES

The Complainant is S.D.S. Industries Inc. d/b/a Timely A California Corporation, Pacoima, CA, USA (“Complainant”) represented by Steven J Colagiovanni.  The Respondent is Young Joon Choi, Tobong-gu Seoul, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <timely.biz>, registered with YesNIC Co. Ltd.

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 21, 2001.

On December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 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 1, 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 <timely.biz> domain name is identical to Complainant's TIMELY mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1975, Complainant has used the TIMELY mark in commerce in relation to the manufacture and sale of pre-finished door frames.  The TIMELY mark was registered by Complainant in the United States in 1979 as United States Registration No. 1,127,186.  Complainant is now expanding its product line of goods sold under the mark to include aluminum door frames.

Respondent registered the disputed domain name on November 19, 2001.  Complainant's investigation could find no evidence that Respondent owns any trademarks or service marks incorporating TIMELY.  Complainant attempted to contact Respondent to discuss the <timely.biz> domain name but Respondent has refused to respond to any of Complainant's enquiries.

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 through use in commerce and registration that it has rights in the TIMELY trademark.  The <timely.biz> domain name is identical to Complainant's TIMELY 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 disputed domain name because it has used the mark in commerce since 1975, and is the owner of  a trademark in the United States.  Respondent has not come forward to offer evidence that it has used the TIMELY mark in connection with its business, 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 <timely.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

It can be inferred that Respondent's planned use of a domain name identical to Complainant's mark 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).

Respondent has not come forward to establish, nor is there any evidence on the record that Respondent is commonly known as <timely.biz>.  Without any evidence to show this fact, the Panel cannot find that Respondent has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  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); see also 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).

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

Registration or Use in Bad Faith

The <timely.biz> domain name is identical to Complainant's TIMELY mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <timely.biz> domain name despite it being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv).  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’”).

Furthermore, based on the fact that Respondent registered the disputed domain name with a registrar which caters to domain name resellers, and Respondent has no valid trademark registrations, and that Respondent has refused to disclose its interests in the domain name to Complainant it can be inferred that Respondent registered the domain name primarily for the purpose of selling it.  This 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.

 

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 <timely.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 14, 2002

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