START-UP TRADEMARK OPPOSITION POLICY

DECISION

Pelephone Communications Ltd. v. Moshe Weisberg

Claim Number: FA0112000102792

PARTIES

The Complainant is Pelephone Communications Ltd., Givataim, ISRAEL (“Complainant”) represented by Tali Rozen.  The Respondent is Moshe Weisberg, Kiriat Ata, ISRAEL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pelephone.biz>, registered with Go Daddy Software Inc.

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 10, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.

On December 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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 10, 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 <pelephone.biz> domain name is identical to Complainant's PELEPHONE mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1985, Complainant has used the PELEPHONE mark in relation to communication services.  Since 1994, Complainant has been known as Pelephone Communications Ltd.  Complainant spends millions of dollars every year on advertising and promoting its name within Israel.  Currently, there are about 1.8 million people using Complainant's cellular services.  Complainant is the owner of four trademarks in Israel, numbered 60713, 60714, 60715 and 88947.  Complainant's website is located at <pelephone.co.il>.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is an individual who lives in Israel.

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 that it has rights in the Pelephone mark through evidence of continuous and extensive use of the mark in Israel since 1985.  Furthermore, Complainant owns four trademark registrations for the mark in Israel.

Therefore, the Panel finds that STOP ¶ 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 no 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 is the owner of  four trademarks in Israel incorporating the word PELEPHONE and it has used the mark continuously since 1985.  Respondent has not come forward to offer evidence that it used the PELEPHONE mark in commerce or owns any trademarks or service marks incorporating the word PELEPHONE.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <pelephone.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <pelephone.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); 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).

Furthermore, based on the fact that Complainant was the first provider of cellular phones in Israel, and is currently the leading provider, it can be assumed that Complainant's PELEPHONE mark is famous in Israel.  Any planned use by Respondent of the <pelephone.biz> domain name, identical to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark and therefore would not be considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also 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).

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

Registration or Use in Bad Faith

Based on the circumstances it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its PELEPHONE mark in a corresponding domain name.  This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) 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”).

The <pelephone.biz> domain name is identical to Complainant's PELEPHONE mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <pelephone.biz> domain name despite it being identical 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”).

Furthermore, because of the famous and distinctive nature of Complainant's PELEPHONE marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <pelephone.biz> domain name. 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); see also 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).

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 <pelephone.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: January 18, 2002

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