START-UP TRADEMARK OPPOSITION POLICY

DECISION

ITT Manufacturing Enterprises Inc. v. Swarthmore Associates LLC

Claim Number: FA0204000112509

PARTIES

Complainant is ITT Manufacturing Enterprises Inc., White Plains, NY, USA (“Complainant”) represented by Peter A. Abruzzese, of Kramer Levin Naftalis & Frankel.  Respondent is Swarthmore Associates LLC, Pacific Palisades, CA, USA (“Respondent”) represented by Sherry A. Lear, of Law Offices of Sherry Anne Lear.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <itt.biz>, registered with PSI - Japan.

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.

Jeffrey M. Samuels, Esq. 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 27, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 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”).

A timely Response was received and determined to be complete on May 20, 2002.

Additional Submissions were received from Complainant May 28, 2002.

On June 13, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jeffrey M. Samuels as the single Panelist.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant ITT Manufacturing Enterprises, Inc. ("ITT") owns at least 770 valid and subsisting trademark and service mark registrations throughout the world for marks incorporating the ITT mark.  The mark has been used for well over forty (40) years on or in connection with a broad variety of goods and services, including telephone and telecommunications services and equipment.  The ITT mark has been advertised extensively around the world.

Complainant further alleges that, to the best of its knowledge, Respondent is not the owner or beneficiary of any trade or service mark consisting in whole or in part of the designation ITT; that an investigation conducted by an independent company revealed no use or preparation for use of the ITT mark by Respondent; and that such report showed no evidence that Respondent, as an individual, business, or other organization, has at any time been commonly known by the domain name <itt.biz>.

With respect to evidence of bad faith registration or use, Complainant maintains that the absence of any evidence of Respondent's rights or legitimate interests with respect to <itt.biz> strongly suggests a bad faith motive for the domain name registration.  Moreover, Complainant adds, as part of the .BIZSTOP procedure, Respondent was to be provided with information relating to ITT's IP Claim demonstrating rights in the ITT mark and thereby given direct notice of ITT's registrations.  Respondent's election to proceed with the registration of <itt.biz> in the face of knowledge of ITT's rights indicates, according to Complainant, an intent to prevent ITT from reflecting its mark in the corresponding <itt.biz> domain name.

In addition, Complainant notes that a partial search of the .BIZ WHOIS database indicates that Respondent has obtained at least forty-one (41) additional .BIZ registrations, including <att.biz>, <cnn.biz>, and <dow.biz>.

Finally, Complainant contends that unless Respondent is barred from commencing active use of the domain name in dispute, ITT will be foreclosed from the use of its ITT mark in the <itt.biz> domain name and that any use of the domain name by Respondent would be virtually certain to cause confusion as to some affiliation or connection with Complainant.

B. Respondent

In its Response, Respondent argues that it should be considered as having rights or legitimate interests in respect of the <itt.biz> domain name.  In support of such assertion, Respondent  indicates that all that is necessary to establish legitimate interests in respect of a domain name is a business concept which is not in disaccord with honest practices in commercial matters.  It further maintains that it does not intend to use "ITT" in a manner that will infringe Complainant's mark, in that the <itt.biz> site will use the initials "itt" as an abbreviation for the type of business that will be conducted on the site.  Respondent also notes that there are numerous third parties that use the acronym or initials "ITT."

C. Additional Submissions

Pursuant to Rule 7 of the National Arbitration Forum Supplemental STOP Rules to the .BIZ Start-Up Trademark Opposition Policy, Complainant submitted a "Supplemental Statement."  Complainant, in its additional submission, contends that Respondent presented no evidence in support of any contention that, before any notice to it of the dispute, it used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.  The Response, Complainant observes, does not describe any business concept for using the disputed domain name.

Complainant also maintains that the STOP Policy does not require proof of trademark infringement but merely that the domain name is identical to a mark in which the Complainant has rights.

FINDINGS

Upon review of the evidence submitted, the Panel finds that:

1. Complainant has met its burden of proving by a preponderance of the competent, credible and admissible evidence that the domain name in question is identical to a mark in which Complainant has rights;

2. Complainant has met its burden of proving by a preponderance of the competent, credible and admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name; and

3. Complainant has met its burden of proving by a preponderance of the competent, credible and admissible evidence that the domain name has been registered or is being used in bad faith.

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.”  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

The evidence establishes that, as a result of its longstanding use of the ITT mark as well as its numerous trademark and service mark registrations for ITT, Complainant has rights in the ITT mark.

Respondent’s Rights or Legitimate Interests

Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name and Respondent offered no evidence of any legitimate right or interest.  Respondent does not own a trade or service mark identical to the domain name (see STOP Policy ¶ 4(c)(i)) and is not commonly known by the domain name. See STOP Policy ¶ 4(c)(iii).

While Respondent presumably relied on STOP Policy ¶ 4(c)(ii), which provides that a Respondent can establish legitimate rights or interest if, prior to notice of the dispute, it has used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services, no evidence was presented to establish such prior use.  As noted by Complainant, the Response "gives not even the barest outline of Respondent's business purpose for the registration." 

Further, the fact that third parties may use the term ITT is simply irrelevant to the issue of whether Respondent has legitimate rights or interests in the domain name in dispute.

Finally, Respondent's assertion that any use of the domain name will not infringe Complainant's ITT mark does not establish any legitimate right or interest.  A STOP proceeding is not equivalent to a trademark infringement suit.  The STOP Policy only requires that the domain name be identical to a mark in which Complainant has rights, not that the domain name infringes any such mark. See MDU Resources Group, Inc. v. Swarthmore Associates, LLC, FA 102957 (Nat Arb. Forum Feb. 26, 2002).

Registration or Use in Bad Faith

Under STOP Policy ¶4(b)(ii), evidence that Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain

name "shall be" considered evidence of the registration or use of the domain name in bad

faith.  Here, given Respondent's knowledge of Complainant's mark and Respondent's lack of legitimate rights or interests, the Panel concludes that Respondent registered the domain name in order to prevent Complainant from using the ITT mark in a corresponding domain name.  See Peachtree Software v. Scarpani, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (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 legitimate interests).  See also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum March 4, 2002) (finding bad faith where Respondent registered the <genelogic.biz> domain name with full knowledge that his intended business use of the name was in direct conflict with a registered mark of a known competitor).

Further support for the Panel's finding of bad faith in this case is found in the fact that Respondent has obtained at least 41 additional .BIZ registrations, many of which incorporate well-known marks.  Such evidence would be sufficient to establish a case of bad faith registration and use under Section 4(b)(ii) of the UDRP.

     

DECISION

The domain name <itt.biz> shall be transferred from Respondent to Complainant.

Jeffrey M. Samuels

June 17, 2002