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Generic Top Level Domain Name (gTLD) Decisions |
Huge Sportswear Inc. v. International
Newcastle
Claim Number: FA0204000112527
Complainant
is Huge Sportswear Inc., Salt Lake
City, UT (“Complainant”) represented by Berne
S. Broadbent, of KIRTON &
McCONKIE. Respondent is International Newcastle, Miami, FL (“Respondent”).
The
domain name at issue is <huge.biz>,
registered with Dotregistrar.com.
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.
James
A. Carmody, Esq., 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 April 27, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
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 7, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James A. Carmody, Esq., 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
1.
Respondent’s
<huge.biz> domain name is identical to Complainant’s HUGE mark.
2.
Respondent
has no rights or legitimate interests in the <huge.biz> domain
name.
3.
Respondent
registered the <huge.biz> domain name in bad faith.
B. Respondent failed to submit a Response in
this Proceeding.
Complainant
is the owner of U.S. Trademark Reg. No. 2,257,687 for HUGE filed on April 24,
1997 and approved on June 29, 1999.
Respondent
registered the contested domain name on March 27, 2002 and has yet to make use
of the contested domain name or develop
an attached website. Complainant’s
research failed to discover any trademark, service mark or trade name
registrations of the HUGE
mark by the Respondent. Also, the WHOIS database
gives Respondent’s address as “FOR SALE at DomainCollection.com” and designates
the “name server” as “THIS-DOMAIN-IS-FOR-SALE.COM.”
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 that it has rights in the HUGE mark by fulfilling trademark
registration requirements and subsequent continuous
use of the mark in
commerce. While one may wonder how the USPTO came to issue a registration for
this generic term, even as limited
to sporting goods, this Panel will not
second guess that determination.
Respondent’s <huge.biz> domain name reflects Complainant’s
mark in its entirety, thereby fulfilling the “identical” analysis conducted
under STOP Policy ¶
4(a)(i).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
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 Respondent’s 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 trademark
in the United States. Respondent has not come forward to
proffer any evidence that it has rights in the HUGE mark anywhere in the
world.
Complainant’s investigation failed to locate any trademark, service mark or
trade name registrations for the HUGE mark under
Respondent’s name. Therefore,
Respondent has not established rights or legitimate interests in the <huge.biz>
domain name under STOP Policy ¶ 4(c)(i). 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).
Respondent openly advertises the sale of
the disputed domain name in WHOIS data fields, typically used for registration
information.
Respondent’s actions imply that the contested domain name has no
legitimate use under STOP Policy ¶ 4(c)(ii) except to be sold beyond
the
out-of-pocket expenses incurred because of registration. See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell domain name suggests it has no legitimate use);
see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the Respondent registered the domain
name with
the intention of selling the domain name).
There is no evidence on the record, nor
has Respondent come forward to establish that it is commonly known by the <huge.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.
As stated in the findings, the WHOIS
database lists Respondent’s address as “FOR SALE at DomainCollection.com” and
designates the
“name server” as “THIS-DOMAIN-IS-FOR-SALE.COM.” These entries in
the “.biz” Registry indicate that Respondent registered the domain
name
primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to the Complainant, or
to a competitor of Complainant,
for valuable consideration in excess of documented out-of-pocket costs. Thus,
Respondent registered
the disputed domain name in bad faith under STOP Policy ¶
4(b)(i). See Parfums Christain
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where
the Respondent’s WHOIS registration information contained the words, “This
is
domain name is for sale”); see also 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 [as
DomainForSaleVMI] 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”).
Due to Complainant’s registration of the
HUGE mark on the Principal Register of the USPTO and NeuLevel’s STOP IP claim
notification
procedure, Respondent was constructively aware of the existence of
Complainant’s mark when it registered the disputed domain name.
Respondent’s
actions signify bad faith registration under STOP Policy ¶ 4(a)(iii). 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).
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
domain name <huge.biz> be TRANSFERRED from Respondent to
Complainant and that subsequent challenges under the STOP Policy against this
domain name SHALL NOT be permitted.
James A. Carmody, Esq., Panelist
Dated: June 12, 2002
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