Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Geac Computer Corporation of 11 Allstate Parkway, Suite 300, Markham, Ontario L3R 9T8, Canada.

The Respondent is the named Registrant, Register.com, Inc. of 575 Eighth Avenue, 11^th Floor, New York, NY 10018, USA.

The domain name is <smartpath.biz>, registered with Register.com of the above address.

(1) The Complaint in Case DBIZ2001-00017 was filed by E-mail on December 10, 2001, and by hard copy on December 12, 2001, and is made under the Start-Up Trademark Opposition Policy for .BIZ (hereafter "STOP").

(2) The WIPO Arbitration and Mediation Center has stated that:

- the Complaint was filed in accordance with the requirements of the Rules for Start-up Trademark Opposition Policy for .BIZ and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ;

- payments for filing were properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified to the named Registrant as Respondent on December 21, 2001, in accordance with the Rules, paragraph 2(a);

- no Response has been received within the permitted period for filing; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in STOP.

(3) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The date scheduled for issuance of a decision is March 1, 2002.

(5) The language of the proceedings is English.

The Complainant is the registered proprietor of the trademark, "Smartpath", in fourteen countries, for computer software (Class 9) and in some instances for associated services (Class 42). The registrations were made before registration of the domain name in dispute. It states that it has used the mark extensively and that the mark has acquired considerable fame and recognition worldwide.

The Complaint asserts that the three requisites upon it in order to obtain an order for transfer of the domain name in suit (for which see below) are made out. It points out that, as noted below, this is a case in which the real Registrant has not revealed its name or address, although it is obliged, by virtue of STOP Rule 2, to warrant that statements made in the <.biz> Registration Agreements were complete and accurate.

No Response has been filed.

According to Paragraph 4(a) of STOP, the Complainant must establish each of the three following elements:

(i) that the domain name in issue is identical to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no right or legitimate interest in respect of the domain name; and

(iii) that the domain name has been registered or is being used in bad faith.

Examples of right or legitimate interest under (ii) may consist of the Respondent showing that it is the owner or beneficiary of an identical trade or service mark; that, before notice of the dispute, it used or prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services; or that, as an individual, business or other organisation, it has been commonly known by the domain name.

Examples of bad faith under (iii) may consist of the Respondent being shown to have registered the domain name primarily for the purpose of transferring the registration for more than documented out-of-pocket costs directly related to the domain name; in order to prevent the Complainant from reflecting its mark in a corresponding domain name; for the purpose of disrupting the business of a competitor; or in order, through use, intentionally to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on your website or location.

The Complainant has provided evidence of registration of the trademark "Smartpath" upon which it relies in these proceedings. The mark is identical with the domain name in dispute for the purposes of STOP and so the first requirement is made out.

The real Registrant of the domain name in dispute has given no indication of who he, she or it is but has instead used the name and address of the domain name Registrar. Yet the STOP Rules require it to identify itself correctly. Because of this or some other reason, the true Registrant has not responded. There is therefore no evidence before me of legitimate right or interest and I must find that the second requirement is made out. Moreover it must be assumed that the registration was made in bad faith. While the Policy gives examples of what may amount to bad faith, these are not exhaustive. In this case of no response after the only notification of the Complaint which it was possible for the Complainant to give, the Complainant has made out the third requisite.

In consequence, in accordance with STOP, Paragraph 4, the Panel orders that the domain name, <smartpath.biz>, be transferred to the Complainant. The Panel also determines that pursuant to Paragraph 15(e) of the STOP Rules no subsequent challenges under STOP against the Disputed Domain shall be permitted.

William R. Cornish
Sole Panelist

Dated: February 22, 2002