START-UP TRADEMARK OPPOSITION POLICY

DECISION

TM Acquisition Corp. v. International Newcastle

Claim Number: FA0204000110760

PARTIES

Complainant is TM Acquisition Corp., Parsippany, NJ, (“Complainant”) represented by Kathryn S. Geib. Respondent is International Newcastle, Miami, FL, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <era.biz>, registered with IHoldings Inc. d/b/a Dotregistrar.com.

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 April 19, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.

On April 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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 May 28, 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

1. Respondent’s <era.biz> domain name is identical to Complainant’s ERA mark.

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

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

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of numerous ERA marks registered with the U.S. Patent & Trademark Office (U.S. Reg. Nos. 1,003,531 and 1,057,923), and has licensed the ERA marks to ERA Franchise Systems, Inc. Through Complainant’s licensing agreement, ERA Franchise Systems has the right to use the two registrations of the ERA mark. An additional twenty-eight registrations and eight pending applications contain the ERA mark as an element of a mark and/or design. ERA Franchise Systems is the owner of trademark registrations for numerous ERA marks in sixty-six additional countries. ERA Franchise Systems has used the ERA marks in the U.S. continuously in connection with the offering of real estate brokerage services since October 1971. Over the past thirty-one years, ERA Franchise Systems has expended many millions of dollars and significant time, resources and effort in advertising, promoting and establishing the goodwill of the ERA marks in association with its business. As a result, the ERA marks are distinctive. ERA Franchise Systems also operates its principal website at <era.com>.

Respondent registered the disputed domain name on March 27, 2002 and is not a franchisee or a licensee of Complainant. Respondent is not authorized to use the ERA mark in any manner nor was it authorized to apply for the domain name in question. Respondent’s listed address on the WhoIs database is “FOR SALE at DomainCollection.com.” Complainant’s investigation has not found any business connection between Respondent and the registration of the contested domain name.

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 ERA mark through registration in the United States and through its subsidiary’s registrations throughout the world. Respondent’s <era.biz> domain name is identical to Complainant’s ERA mark. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that, due to the nature of STOP proceedings, identicalness between Complainant's mark and disputed domain name should never be a threshold issue).

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. 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 Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Complainant has established that it has rights in the disputed domain name because it is the owner of the relevant registered trademarks in the United States. Respondent has not come forward to proffer any evidence that it has rights in the ERA mark anywhere in the world. Complainant’s investigation and search of the U.S. Patent & Trademark Office’s online database revealed that Respondent has no applications or registrations on file for the ERA mark. Therefore, Respondent has no rights or legitimate interests in the <era.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

It can be inferred that Respondent’s planned use of the domain name identical to Complainant’s mark would be to divert Internet users interested in Complainant’s services to Respondent’s website. 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 incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests). Respondent’s registration of an infringing domain name in order to opportunistically trade on the goodwill of Complainant’s mark does not constitute a bona fide offering of goods or services under STOP Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum Mar. 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)). Also, Respondent has not prepared to use the ERA mark in any bona fide business offering, nor has Respondent utilized the mark in the past. Failure to provide evidential confirmation as to the use of the disputed domain name leads to the inference that one does not exist. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant).

There is no evidence on the record and Respondent has not come forward to establish that it is commonly known by the <era.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii); Respondent is known to this Panel as International Newcastle. 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).

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

Registration or Use in Bad Faith

Respondent’s primary purpose in registering the domain name was to strategically use it as leverage for coercing Complainant into purchasing the contested domain name. Respondent freely admits its bad faith intentions on the WhoIs information page by placing the words “FOR SALE at DomainCollection.com” in the line provided for Registrant’s billing address. Respondent has not yet had the opportunity to offer the domain name for sale since the STOP procedure has precluded the full benefits of ownership. Respondent’s actions evidence an intent to register the disputed domain name primarily for the purpose of selling or transferring the name to Complainant for valuable consideration, thereby satisfying STOP Policy ¶ 4(b)(i) requirements. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also 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).

Respondent registered the domain name for the purpose of preventing Complainant from registering its ERA mark in a corresponding domain name, fulfilling STOP Policy ¶ 4(b)(ii) requirements. Respondent had constructive notice of the ERA mark when it purchased the domain name by virtue of the STOP registration procedure, numerous trademark registrations and fame of the ERA mark. Therefore, registration constituted bad faith infringement of Complainant’s right to reflect its mark. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trademark of another in connection with that other’s goods or services: it prevents the trademark owner from reflecting that mark in a corresponding domain name”).

Furthermore, the <era.biz> domain name is identical to Complainant’s ERA mark resulting in the likelihood that Internet users will believe that there is some affiliation between Respondent and Complainant; notwithstanding the fact that Respondent had no authorization to make use of Complainant’s mark. Registration of the <era.biz> domain name despite its being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since Respondent is attempting to ensnare Internet users seeking Complainant’s website based on the goodwill associated with its famous mark. See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website).

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 <era.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

Sandra Franklin, Panelist

Dated:  May 31, 2002

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