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Generic Top Level Domain Name (gTLD) Decisions |
William L. Lyon & Associates Inc. v.
Makoto Yata
Claim Number: FA0112000103043
The
Complainant is William L. Lyon &
Associates Inc., Sacramento, CA, (“Complainant”) represented by Kim J. Mueller, of Kim J. Mueller Law Firm.
The Respondent is Makoto Yata,
Wakayama-si, JAPAN (“Respondent”).
The
domain name at issue is <lyon.biz>,
registered with Global Media Online Inc.
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.
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 January 7, 2002.
On
January 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 4, 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 March 11, 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.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Respondent’s
<lyon.biz> domain name is identical to Complainant’s
LYON mark.
Respondent does not have any rights or legitimate
interests in <lyon.biz>.
Respondent registered the domain name in bad faith.
B.
Respondent
Respondent
failed to submit a response.
Complainant has established common law
rights in LYON by virtue of its continuous use of the mark in commerce since
1946. As early as 1978, Complainant has
had a national presence throughout the United States through its distribution
of a national magazine
of real estate listings. Its national presence expanded to an international presence when
it represented the United States Army and Federal Aviation Administration.
As a
result of this representation, it developed customers in Germany, France, and
the United Kingdom. Additionally,
Complainant has established legal rights to its LYON service mark through
registration of the mark in 1996 within the
State of California (Reg. No.
45881).
Moreover, Complainant has developed a
presence on the Internet since 1995 in connection with its website at
<lyonrealty.com>.
Respondent registered the disputed domain
name on November 19, 2001. According to
Complainant’s Internet search, this domain name is the only connection
Respondent has to the LYON mark.
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
has established legal rights in its LYON service mark through its registration
of the mark in the State of California
(Reg. No. 45881) as well as common law
rights in LYON through its continuous use of the mark in commerce since 1946.
The
<lyon.biz> domain name is identical to Complainant’s LYON service
mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
There
is no evidence from Complainant’s Internet search, nor has Respondent come
forth to provide any evidence that it owns any trade
or service marks in
anything incorporating the LYON mark.
As a result, Respondent has failed to demonstrate rights to or
legitimate interests in the disputed 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).
Moreover,
Respondent, known as Makoto Yata, has not provided any evidence indicating that
it is commonly known by the LYON mark or
the identical domain name, and has
therefore, failed to demonstrate rights or legitimate interests in the disputed
domain 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 a domain name when Respondent is not known
by the mark).
Due
to the fame of Complainant’s mark nationally and internationally, as well as
its state registration of LYON, Respondent’s registration
of a domain name
identical to Complainant’s famous mark evidences an intent to trade off of the
goodwill of Complainant’s mark, by
attracting Internet users confused as to the
likely affiliation between Complainant and Respondent’s website. This behavior indicates Respondent has no
rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii). See 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
incorporated Complainant’s HOUSEHOLD BANK
mark, with hopes of attracting Complainant’s customers, and thus demonstrating
no rights
or legitimate interests).
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Due
to the famous nature of Complainant’s service mark in relation to international
and national real estate listings, it can be presumed
that Respondent was aware
of Complainant’s mark. Respondent’s
constructive or actual knowledge of Complainant’s mark at the time of
registration of an identical domain name is evidence
of bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual
or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constitutes
bad faith); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence
of bad faith includes actual or constructive knowledge of a commonly known mark
at the time of registration).
Additionally,
Respondent’s registration of a domain name that is obviously associated with
Complainant’s mark indicates that Respondent
registered the domain to
commercially benefit from the resulting consumer confusion. This is bad faith pursuant to STOP Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
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 <lyon.biz> domain name be transferred from Respondent
to Complainant and subsequent challenges under the STOP Policy against the
domain name shall not be permitted.
_
Sandra Franklin, Panelist
Dated: March 21, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/428.html