START-UP TRADEMARK OPPOSITION POLICY

DECISION

Eurosat Distribution Limited v. DOTSERV

Claim Number: FA0204000109700

PARTIES

The Complainant is Eurosat Distribution Limited, London, [UNITED KINGDOM] (“Complainant”) represented by Sarah Woolway, of Morgan Cole.  The Respondent is DOTSERV, Naestved, [DENMARK] (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <eurosat.biz>, registered with Network Solutions.

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 12, 2002; the Forum received a hard copy of the Complaint on April 15, 2002.

On April 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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 21, 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. The <eurosat.biz> domain name is identical to Complainant’s EUROSAT mark.

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

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

B. Respondent failed to submit a Response.

FINDINGS

Complainant registered the EUROSAT mark, UK 2017928, in the United Kingdom on April 19, 1995. Complainant uses the EUROSAT mark for satellite receivers, parts and fittings.

Respondent, known as DOTSERV, registered the disputed domain name on March 27, 2002. Complainant’s investigation has not found any trademark or service marks owned by Respondent for EUROSAT.

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 EUROSAT trademark through evidence of continuous use since 1995 and completion of the relevant trademark registrations in the United Kingdom.

The <eurosat.biz> domain name is identical to Complainant’s EUROSAT mark in spelling, form and pronunciation. As stated, Respondent’s contested domain name is identical to Complainant’s mark since gTLDs are irrelevant in making the determination of whether the contested domain is identical to the Complainant’s mark. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the <.biz> gTLD in the disputed domain name is not a factor and hence to be ignored, in determining whether a disputed domain name is identical to the mark in which Complainant asserts rights).

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 no rights or legitimate interests in the disputed domain name. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of the Complainant. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).

Complainant has established that it has rights in the disputed domain name because it is the owner of a registered trademark incorporating the work EUROSAT. Respondent has not come forward to offer evidence that it has common law rights in the mark EUROSAT or owns any registered trademarks or service marks incorporating the mark. Therefore, Respondent has not demonstrated any rights or legitimate interests in the <eurosat.biz> domain name pursuant to STOP Policy ¶ 4(c)(i). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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).

Based on Complainant’s continuous use of the EUROSAT mark, any planned use by Respondent of the <eurosat.biz> domain name, identical to Complainant’s famous mark, would represent a deliberate attempt to deceptively attract customers via Complainant’s mark. Therefore, Respondent’s use is not 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 William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 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)).

Complainant has provided evidence that Respondent is commonly known as DOTSERV. There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <eurosat.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). Therefore the Respondent has not demonstrated rights or legitimate interests in the disputed domain name.

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

Registration or Use in Bad Faith

It can be inferred that Respondent registered the disputed domain name in order to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s EUROSAT mark. This registration is in violation of STOP Policy ¶ 4(b)(iv). The contested <eurosat.biz> domain name is identical to Complainant’s EUROSAT mark and Internet users will likely believe there is an affiliation between Respondent’s site and Complainant; thus, evidence of bad faith exists. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”); 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).

Because of the famous and distinctive nature of Complainant’s EUROSAT mark, Respondent is thought to have been on notice of the existence of Complainant’s mark at the time Respondent registered the infringing <eurosat.biz> domain name. Registration of a domain name incorporating the entirety of another’s mark with knowledge that the domain name is infringing is evidence of bad faith. See Gehl Co. v. Gehl, FA 102816 (Nat. Arb. Forum Jan. 30, 2002) (finding that the “long standing use and historic nature” of the Complainant’s GEHL mark put the Respondent on notice as to the existence of the mark, thereby making Respondent aware that it was infringing upon Complainant’s rights); 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’”).

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 <eurosat.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: June 3, 2002

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