START-UP TRADEMARK OPPOSITION POLICY

DECISION

Trade Media Holdings Limited v. Skarbiec.com S.A.

Claim Number: FA0204000110810

PARTIES

Complainant is Trade Media Holdings Limited, George Town,  GRAND CAYMAN ISLANDS (“Complainant”) represented by Yang Ping Tang.  Respondent is Skarbiec.com S.A., Warsaw, POLAND (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

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 April 24, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 June 5, 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 <globalsources.biz> domain name is identical to GLOBAL SOURCES, a mark in which Complainant holds rights. 

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered the disputed domain name in bad faith. 

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds registered trademarks for the GLOBAL SOURCES mark in Australia (Reg. No. 866,560), Hong Kong (Reg. No. B11250/2000), Isreal (Reg. No. 144,243), and Switzerland (Reg. No. 04867/2000).  Complainant also has pending applications for the GLOBAL SOURCES mark in the United States, Mexico, South Africa, and Thailand, among others.  Complainant has used its GLOBAL SOURCES mark since at least September 1999 and operates a web-based business at <globalsources.com>. 

Respondent registered <globalsources.biz> on March 27, 2002 and has not established a purpose or use for the domain name.  Complainant’s investigation shows that Respondent operates a website at <skarbiec.com> that is in the business of providing domain name registration services.

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 holds multiple registered trademarks in GLOBAL SOURCES throughout the world and has continued to apply for trademark protections in various countries world-wide.  Complainant has also continuously used the GLOBAL SOURCES mark in its business operations since September 1999.  Therefore, Complainant has demonstrated its rights to and interests in the GLOBAL SOURCES mark.

Respondent’s <globalsources.biz> contains Complainant’s entire GLOBAL SOURCES mark.  Hence, Respondent’s domain name is identical to Complainant’s mark.

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

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the GLOBAL SOURCES mark.  Because Respondent has not submitted a Response in this matter, the Panel may properly presume it has no rights or interests in the disputed domain name.  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).

Respondent has offered no evidence that it holds a trademark or service mark identical to the disputed domain name pursuant to STOP Policy ¶ 4(c)(i), nor that it has been commonly known by the domain name pursuant to STOP Policy ¶ 4(c)(iii).  Thus, Respondent has not demonstrated rights or legitimate interests in <globalsource.biz>.  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); 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, since Respondent has failed to provide evidence of intent to use the domain name, it can be inferred that the domain name was intended to be used to divert Complainant’s customers, which is not bona fide offering of goods or services.  Therefore, Respondent has failed to meet the burden of STOP Policy ¶ 4(c)(ii).  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); see also 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 Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

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

Registration or Use in Bad Faith

Respondent had constructive notice of the fact that its <globalsources.biz> domain name was identical to Complainant’s GLOBAL SOURCES mark due to the unique STOP registration procedure.  This constructive notice supports a finding of bad faith registration on the part of Respondent.  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 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). 

Respondent operates a website, <skarbiec.com>, that provides domain name registration services.  This evidences an intent to sell the <globalsource.biz> domain name for profit.  Therefore, Respondent registered the domain name in bad faith under STOP Policy ¶ 4(b)(i).  See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).

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

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the <globalsources.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: June 6, 2002

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